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

Filing 123

Declaration re 122 Claim Construction Brief of Joshua Sohn in Support of Defendants' Opening Claim Construction Brief by AOL Inc., Gannett Company, Inc., Google Inc., IAC Search & Media, Inc., Target Corporation. (Attachments: # 1 Exhibit A, # 2 Exhibit B, # 3 Exhibit C, # 4 Exhibit D, # 5 Exhibit E, # 6 Exhibit F, # 7 Exhibit G, # 8 Exhibit H)(Noona, Stephen)

EXHIBIT D

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF VIRGINIA
NORFOLK DIVISION
__________________________________________
)
I/P ENGINE, INC.,
)
)
Plaintiff,
)
v.
)
Civ. Action No. 2:11-cv-512
)
AOL, INC. et al.,
)
)
Defendants.
)
__________________________________________)
PLAINTIFF I/P ENGINE, INC.’S RESPONSES AND OBJECTIONS
TO DEFENDANT GOOGLE, INC.’S THIRD SET OF INTERROGATORIES
Pursuant to Rules 26 and 33 of the Federal Rules of Civil Procedure, I/P Engine, Inc.
(“I/P Engine”) hereby objects and responds to Google, Inc.’s (“Google”) Third Set of
Interrogatories (“Interrogatories”). These responses are based on information reasonably
available to I/P Engine at the present time. I/P Engine reserves the right to supplement these
responses when, and if, additional information becomes available. I/P Engine also reserves the
right to object on any ground at any time to such other or supplemental interrogatories Google
may propound involving or relating to the subject matter of these Interrogatories.
GENERAL OBJECTIONS
1.

I/P Engine incorporates each of the general objections included in its Responses

and Objections to Defendant Google, Inc.’s First Set of Interrogatories and Second Set of
Interrogatories as if fully recited herein.
2.

I/P Engine objects to the Interrogatories to the extent they purport to impose upon

I/P Engine obligations exceeding those set forth in the Federal Rules of Civil Procedure, the
Local Rules of the Court and applicable case law.

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3.

I/P Engine objects to Google’s definition of “’664 Patent” because the phrase “all

underlying patent applications, all continuations, continuations, continuations-in-part,
divisionals, reissues, and any other patent applications in the ‘664 patent family” is overly broad
and unduly burdensome as the phrase purports to include more than the claimed invention of
U.S. Patent No. 6,775,664. In responding to these Interrogatories, I/P Engine will limit its
responses to the claims of U.S. Patent No. 6,775,664 identified as asserted claims in either I/P
Engine’s Preliminary Disclosure of Asserted Claims and Pre-Discovery Infringement
Contentions, dated November 7, 2011 or November 11, 2011 respectively, or I/P Engine’s
Second Preliminary Disclosure of Asserted Claims and Infringement Contentions, dated
February 17, 2012.
4.

I/P Engine objects to Google’s definition of “’420 Patent” because the phrase “all

underlying patent applications, all continuations, continuations, continuations-in-part,
divisionals, reissues, and any other patent applications in the ‘664 patent family” is overly broad
and unduly burdensome as the phrase purports to include more than the claimed invention of
U.S. Patent No. 6,314,420. In responding to these Interrogatories, I/P Engine will limit its
responses to the claims of U.S. Patent No. 6,314,420 identified as asserted claims in either I/P
Engine’s Preliminary Disclosure of Asserted Claims and Pre-Discovery Infringement
Contentions, dated November 7, 2011 or November 11, 2011 respectively, or I/P Engine’s
Second Preliminary Disclosure of Asserted Claims and Infringement Contentions, dated
February 17, 2012.
5.

I/P Engine objects to Google definition of “Prior Art” as overly broad to the

extent that it includes “publications, patents, physical devices, prototypes, uses, sales, and offers
for sale, and any DOCUMENTS or OTHER ITEMS evidencing any of the foregoing” not cited
in Google’s response to I/P Engine’s Interrogatory No. 8.

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6.

I/P Engine objects to Google’s definition of “Asserted Claim” as overly broad to

the extent that it includes more than the claims identified as asserted claims in either I/P Engine’s
Preliminary Disclosure of Asserted Claims and Pre-Discovery Infringement Contentions, dated
November 7, 2011 or November 11, 2011 respectively, or I/P Engine’s Second Preliminary
Disclosure of Asserted Claims and Infringement Contentions, dated February 17, 2012.
RESPONSES AND SPECIFIC OBJECTIONS
Statements made herein regarding I/P Engine’s intention to provide information or
documents responsive to any given Interrogatory do not necessarily indicate or imply the
existence of any information or documents responsive thereto. Furthermore, any information
provided or referred to herein is not deemed to be a waiver of I/P Engine’s objections as to the
authenticity, competency, relevancy, materiality, privilege or admissibility of evidence in this or
any subsequent proceeding or trial in this or any other action for any purpose whatsoever. In
addition, I/P Engine reserves the right to supplement or amend its responses to the
Interrogatories based upon information, documents, and things it receives during discovery or
obtains upon further investigation.
Discovery and trial preparation in this matter have not been completed. I/P Engine is
continuing its investigation to obtain information responsive to the Interrogatories. Therefore, all
responses will be given without prejudice to I/P Engine’s right to introduce documents or
information discovered or deemed responsive subsequent to the date of these responses.
In gathering relevant and responsive information, I/P Engine has interpreted the
Interrogatories utilizing ordinary meanings of words and has expended reasonable efforts to
identify information that appears responsive. To the extent that the Interrogatories purport to
seek information other than as so interpreted, I/P Engine objects on the ground that the
Interrogatories are vague, ambiguous and overbroad.

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I/P Engine’s response to the Interrogatories is without waiver or limitation of I/P
Engine’s right to object on the grounds of authenticity, competency, relevancy, materiality,
privilege, admissibility as evidence for any purpose, or any other grounds to the use of any
documents or information in any subsequent proceeding in, or the trial of, this or any other
action.
I/P Engine’s production, if any, of third party documents related to this litigation does not
waive or limit I/P Engine’s, or any other party’s, right to object on the grounds of authenticity,
competency, relevancy, materiality, privilege, admissibility as evidence for any purpose, or any
other grounds to the use of any documents or information in any subsequent proceeding in, or the
trial of, this or any other action. I/P Engine’s producing of such documents also does not
constitute an admission or representation that the information contained within the documents is
known or reasonably available to I/P Engine. Additionally, I/P Engine does not have a legal
right to obtain or demand further documents from any third party, or have an established
relationship with any third party.
I/P Engine incorporates all of its Objections to Definitions and Instructions set forth
above and in its Responses and Objections to Defendant Google, Inc.’s First Set of
Interrogatories and Second Set of Interrogatories.
INTERROGATORIES
INTERROGATORY NO. 13:
IDENTIFY each element of each ASSERTED CLAIM that YOU contend is not
disclosed in each of the PRIOR ART references cited by GOOGLE in its supplementary
response to Plaintiff’s Interrogatory No. 8, served on February 13, 2012 (and any later
supplementation or amendments thereto), and set forth in specific detail each fact, opinion,
argument, inference, and DOCUMENT that supports YOUR contention (including the name,
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address, and telephone number of each PERSON who has firsthand knowledge or possession of
each such fact, opinion, and DOCUMENT).
RESPONSE:
Plaintiff incorporates its general objections and specific objections. I/P Engine objects to
this Interrogatory to the extent it seeks information that is protected by the attorney-client
privilege, the work product doctrine, Rule 26(b)(4)(B) immunity, or any other applicable
privilege or immunity. I/P Engine further objects to this Interrogatory to the extent that it seeks a
legal conclusion or information not in I/P Engine’s possession, custody or control. I/P Engine
further objects to this Interrogatory as premature to the extent that it seeks expert opinion
evidence or I/P Engine’s claim construction positions, which will be provided in accordance with
the Federal Rules of Civil Procedure, the Local Rules of the Court, or the Court’s scheduling
orders, or any other than I/P Engine’s present contentions, which are subject to development as
discovery proceeds. I/P Engine further objects to this Interrogatory as unduly burdensome and
inappropriate to the extent that it is Defendants’ burden to plead and prove invalidity by clear
and convincing evidence including establishing any motivation to combine references. I/P
Engine further objects to this Interrogatory as it has multiple, unrelated subparts whereby Google
is attempting to exceed the interrogatory limit set by the Federal Rules of Civil Procedure and
this Court. “Defendants may not seek, in a single interrogatory, specific responses for every
piece of prior art.” Orion IP, LLC v. Staples, Inc., et al., No. 2:04-CV-00297, D.I. 171 at 12 (E.D. Tex. July 7, 2005) (“While Defendants may seek, in separate interrogatories, specific
responses regarding specific pieces of prior art, or may seek, in a single interrogatory, a general
response regarding all identified prior art, Defendants may not seek, in a single interrogatory,
specific responses for every piece of prior art. Such an interrogatory would burden the Plaintiff

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and dramatically expand the number of interrogatories.”). Responding to this Interrogatory as
drafted would exceed the permitted number of Interrogatories.
Subject to and without waiving the foregoing objections, I/P Engine responds:
I/P Engine provides its present contentions. I/P Engine’s contentions will be further
informed through discovery and expert analysis and therefore will be supplemented as necessary
during ongoing discovery. I/P Engine’s contentions are limited to addressing the references that
Defendants have provided contentions for in Defendants’ Preliminary Invalidity Contentions.
The ‘420 Patent and ‘664 Patent are presumed valid. Additionally, the ‘420 Patent and
‘664 Patent are patentably distinct from the references described in Defendants’ Preliminary
Invalidity Contentions for many reasons.
U.S. Patent No. 6,202,058 to Rose (“Rose”)
The ‘420 Patent is patentably distinct from Rose for many reasons. For example, Rose
does not disclose a “demand search” as recited in claims 10 and 25. The on-line text retrieval
service mentioned in Rose (cited by Defendants as meeting this element) is not a “demand
search” as it is not a one-shot search. See Rose at 2:51-55. Nor does Rose disclose a “search for
informons relevant to a query from an individual user” as recited in claims 10 and 25. In Rose,
the on-line text retrieval service (cited by Defendants as meeting this element) does not search
for items that are relevant to a query received from a user. Id. Further, Rose does not disclose
“filtering the informons . . . for relevance to the query” as recited in claims 10 and 25. The Rose
ranking described in the Abstract and col. 6, ll. 5-11 (cited by Defendants as meeting this
element) ranks items based on how well their content matches a profile of interests stored for
each user, not a query received from an individual user. See, e.g., Rose at Abstract. Moreover,
Rose does not disclose “combining pertaining feedback data . . . with the content profile data in

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filtering each informon for relevance to the query” as recited in claims 10 and 25. Rose’s
ranking does not filter items for relevance to a query. The Rose ranking described in the
Abstract and col. 6, ll. 5-11 (cited by Defendants as meeting this element) ranks items based on
how well their content matches a profile of interests stored for each user, not a query received
from an individual user. See, e.g., Rose at Abstract. Further, the feedback in Rose is an
indication of interest in each document retrieved from the system. See, e.g., Rose at 2:46-50.
Because Rose does not disclose all of the limitations of claims 10 and 25, Rose cannot disclose
all of the limitations recited by claims 14, 15, 27, and 28
The ‘664 Patent is patentably distinct from Rose for many reasons. For example, Rose
does not disclose “searching for information relevant to a query associated with a first user” as
recited in claims 1 and 26. The on-line text retrieval service described in Rose (cited by
Defendants as meeting this element) does not search for items that are relevant to a query
associated with a first user. See Rose at 2:51-55. Rose also does not disclose “receiving
information found to be relevant to the query by other users” as recited in claims 1 and 26.
Rose’s feedback is an indication of interest in each document retrieved from the system. See,
e.g., Rose at 2:46-50. Furthermore, Rose does not disclose “combining the information from the
feedback system with the information from the scanning system and . . . filtering the combined
information for relevance to at least one of the query and the first user” or “combining the
information found to be relevant to the query by other users with the searched information [and]
. . . filtering the combined information for relevance to at least one of the query and the first
user” as recited in claims 1 and 26, respectively. Since Rose does not disclose the two
component parts (as described above), it consequently fails to disclose combining those two

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components of information. Because Rose does not disclose all of the limitations of claims 1
and 26, Rose cannot disclose all of the limitations recited by claims 5, 6, 21, 22, 28 and 38.
U.S. Patent No. 5,835,087 to Herz et al. (“Herz”)
The ‘420 Patent is patentably distinct from Herz for many reasons. For example, Herz
does not disclose a “demand search” as recited in claims 10 and 25. The “target profile interest
summary,” “search profile set,” and “search profiles” in Herz (cited by Defendants as meeting
this element) are not “demand searches” as they are not one-shot searches. See, e.g., Herz at
6:42-58. Moreover, Herz does not disclose a “search for informons relevant to a query from an
individual user” as recited in claims 10 and 25. The “target profile interest summary,” “search
profile set,” and “search profiles” in Herz (cited by Defendants as meeting this element) do not
search for items that are relevant to a query received from a user. Id. Herz also does not disclose
“filtering the informons . . . for relevance to the query” as recited in claims 10 and 25. The Herz
ranking described in the Abstract (cited by Defendants as meeting this element) states that the
system ranks items after it “automatically constructs . . . a ‘target profile interest summary’ for
each user . . . [and] evaluates the target profiles against the users’ target profile interest
summaries.” This ranking does not filter items for relevance to a query received from an
individual user. See, e.g., Herz at Abstract. Additionally, Herz does not disclose “combining
pertaining feedback data . . . with the content profile data in filtering each informon for relevance
to the query” as recited in claims 10 and 25. The Herz ranking does not filter items for relevance
to a query, as discussed above. Further, the feedback in Herz is an indication of how well a user
liked an item. See, e.g., Herz at 19:9-14. Moreover, Herz does not “combine” the features that
Defendants allege meet each of the “feedback data” and the “content profile data,” because the
cited features relate to different portions and embodiments of the disclosed systems. Because

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Herz does not disclose all of the limitations of claims 10 and 25, Herz cannot disclose all of the
limitations recited by claims 14, 15, 27, and 28.
The ‘664 Patent is patentably distinct from Herz for many reasons. For example, Herz
does not disclose “searching for information relevant to a query associated with a first user.”
The “target profile interest summary,” “search profile set,” and “search profiles” in Herz (cited
by Defendants as meeting this element) do not search for items that are relevant to a query
associated with a user. See, e.g., Herz at 6:42-58. Nor does Herz disclose “receiving
information found to be relevant to the query by other users.” Herz’s feedback is an indication
of how well a user liked an item. See, e.g., Herz at 19:9-14. Further, Herz does not disclose
“combining the information from the feedback system with the information from the scanning
system and . . . filtering the combined information for relevance to at least one of the query and
the first user” or “combining the information found to be relevant to the query by other users
with the searched information [and] . . . filtering the combined information for relevance to at
least one of the query and the first user” as recited in claims 1 and 26, respectively. Because
Herz does not disclose the two component parts (as described above), it consequently fails to
disclose combining those two components of information. Moreover, Herz does not “combine”
the features that Defendants allege meet each of the two components because the cited features
are related to separate portions and/or embodiments of the disclosed systems. Because Herz
does not disclose all of the limitations of claims 1 and 26, Herz cannot disclose all of the
limitations recited by claims 5, 6, 21, 22, 28 and 38.

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Lashkari, “Feature Guided Automated Collaborative Filtering,” MIT Masters Thesis (September
1995) (“Lashkari”)
The ‘420 Patent is patentably distinct from Lashkari for many reasons. For example,
Lashkari does not disclose “filtering the informons . . . for relevance to the query” as recited in
claims 10 and 25. The Lashkari Feature Guided Automated Collaborative Filtering system (cited
by Defendants as meeting this element) filters items using feedback that is related to features of
an item. Additionally, Lashkari does not disclose “combining pertaining feedback data . . . with
the content profile data in filtering each informon for relevance to the query” as recited in claims
10 and 25. The Lashkari ranking does not filter items for relevance to a query, as discussed
above. Further, the feedback in Lashkari is a rating of a document (for example, on a seven
point scale) and represents the “interestingness” of a particular document to a user. See, e.g.,
Lashkari at 57. Because Lashkari does not disclose all of the limitations of claims 10 and 25,
Lashkari cannot disclose all of the limitations recited by claims 14, 15, 27, and 28.
The ‘664 Patent is patentably distinct from Lashkari for many reasons. For example,
Lashkari does not disclose “searching for information relevant to a query associated with a first
user.” The Lashkari Feature Guided Automated Collaborative Filtering system (cited by
Defendants as meeting this element) filters items using feedback that is related to features of an
item. Nor does Lashkari disclose “receiving information found to be relevant to the query by
other users.” Lashkari’s feedback is a rating of a document (for example, on a seven point scale)
and represents the “interestingness” of a particular document to a user. See, e.g., Lashkari at 57.
Further, Lashkari does not disclose “combining the information from the feedback system with
the information from the scanning system and . . . filtering the combined information for
relevance to at least one of the query and the first user” or “combining the information found to

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be relevant to the query by other users with the searched information [and] . . . filtering the
combined information for relevance to at least one of the query and the first user” as recited in
claims 1 and 26, respectively. Because Lashkari does not disclose the two component parts (as
described above), it consequently fails to disclose combining those two components of
information. Moreover, Lashkari does not “combine” the features that Defendants allege meet
each of the two components because the cited features are parts of different systems. Because
Lashkari does not disclose all of the limitations of claims 1 and 26, Lashkari cannot disclose all
of the limitations recited by claims 5, 6, 21, 22, 28 and 38.
Goldberg et al., “Using Collaborative Filtering to Weave an Information Tapestry (1992)
(“Tapestry”)
The ‘420 Patent is patentably distinct from Tapestry for many reasons. For example,
Tapestry does not disclose “filtering the informons . . . for relevance to the query” as recited in
claims 10 and 25. Tapestry’s Appraiser (cited by Defendants as meeting this element) applies
personalized classification to documents and prioritizes and categorizes documents. See, e.g.,
Tapestry at 63. Additionally, Tapestry does not disclose “combining pertaining feedback data
. . . with the content profile data in filtering each informon for relevance to the query” as recited
in claims 10 and 25. The Tapestry Appraiser does not filter items for relevance to a query, as
discussed above. Further, the feedback in Tapestry is described as annotations or “implicit
feedback from users (e.g., some user sent a reply to the document).” See, e.g., Tapestry at 62-63.
Moreover, Tapestry does not “combine” the features that Defendants allege meet each of the
“feedback data” and the “content profile data,” because the cited features relate to separate
portions and/or embodiments of the disclosed systems. See, e.g., Tapestry at 63; Figure 2.

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Because Tapestry does not disclose all of the limitations of claims 10 and 25, Tapestry cannot
disclose all of the limitations recited by claims 14, 15, 27, and 28.
The ‘664 Patent is patentably distinct from Tapestry for many reasons. For example,
Tapestry does not disclose “receiving information found to be relevant to the query by other
users.” Tapestry’s feedback is described as annotations or “implicit feedback from users (e.g.,
some user sent a reply to the document).” See, e.g., Tapestry at 62-63. Further, Tapestry does
not disclose “combining the information from the feedback system with the information from the
scanning system and . . . filtering the combined information for relevance to at least one of the
query and the first user” or “combining the information found to be relevant to the query by
other users with the searched information [and] . . . filtering the combined information for
relevance to at least one of the query and the first user” as recited in claims 1 and 26,
respectively. Because Tapestry does not disclose the two component parts (as described above),
it consequently fails to disclose combining those two components of information. Moreover,
Tapestry does not “combine” the features that Defendants allege meet each of the two
components because the cited features relate to separate portions and/or embodiments of the
disclosed systems. See, e.g., Tapestry at 63; Figure 2. Tapestry also does not disclose filtering
items “for relevance to at least one of the query and the first user” as recited by claims 1 and 26.
In Tapestry, the Filterer determines if a document matches the query, and places matching
documents in the little box of the query’s owner, and the Appraiser categorizes items. Tapestry
at 63. Because Tapestry does not disclose all of the limitations of claims 1 and 26, Tapestry
cannot disclose all of the limitations recited by claims 5, 6, 21, 22, 28 and 38.

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Balabanovic et al., “Fab: Content-Based Collaborative Recommendation,” Communications of
the ACM (March 1997) (“Balabanovic”)
The ‘420 Patent is patentably distinct from Balabanovic for many reasons. For example,
Balabanovic does not disclose a “demand search” as recited in claims 10 and 25. The queries
constructed by “index agents” (cited by the Defendants as meeting this element) are not “demand
searches” as they are not one-shot searches. See, e.g., Balabanovic at 69-70. Moreover,
Balabanovic does not disclose a “search for informons relevant to a query from an individual
user” as recited in claims 10 and 25. The queries constructed by “index agents” in Balabanovic
(cited by Defendants as meeting this element) do not search for items that are relevant to a query
received from a user. Id. Balabanovic also does not disclose “filtering the informons . . . for
relevance to the query” as recited in claims 10 and 25. The Balabanovic central router forwards
pages found by the collection agents to users whose profiles the pages match above a threshold.
Balabanovic at 69. Additionally, Balabanovic does not disclose “combining pertaining feedback
data . . . with the content profile data in filtering each informon for relevance to the query” as
recited in claims 10 and 25. The Balabanovic central router does not filter items for relevance to
a query, as discussed above. Further, the feedback in Balabanovic is an indication of how well a
user liked an item. See, e.g., Balabanovic at 19:9-14. Moreover, Balabanovic does not
“combine” the features that Defendants allege meet each of the “feedback data” and the “content
profile data,” because the cited features relate to separate and distinct processes of the
Balabanovic system. Because Balabanovic does not disclose all of the limitations of claims 10
and 25, Balabanovic cannot disclose all of the limitations recited by claims 14, 15, 27, and 28.
The ‘664 Patent is patentably distinct from Balabanovic for many reasons. For example,
Balabanovic does not disclose “searching for information relevant to a query associated with a

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first user.” The queries constructed by “index agents” in Balabanovic (cited by Defendants as
meeting this element) do not search for items that are relevant to a query associated with a user.
See, e.g., Balabanovic at 62-63. Nor does Balabanovic disclose “receiving information found to
be relevant to the query by other users.” Balabanovic’s feedback is an indication of how well a
user liked an item. See, e.g., Balabanovic at 69. Further, Balabanovic does not disclose
“combining the information from the feedback system with the information from the scanning
system and . . . filtering the combined information for relevance to at least one of the query and
the first user” or “combining the information found to be relevant to the query by other users
with the searched information [and] . . . filtering the combined information for relevance to at
least one of the query and the first user” as recited in claims 1 and 26, respectively. Because
Balabanovic does not disclose the two component parts (as described above), it consequently
fails to disclose combining those two components of information. Moreover, Balabanovic does
not “combine” the features that Defendants allege meet each of the two components because the
cited features relate to separate portions and/or embodiments of the disclosed systems. Because
Balabanovic does not disclose all of the limitations of claims 1 and 26, Balabanovic cannot
disclose all of the limitations recited by claims 5, 6, 21, 22, 28 and 38.
Paul Resnick et al., “GroupLens: An Open Architecture for Collaborative Filtering of NetNews,”
Proceedings of ACM 1994 Conference on Computer Supported Cooperative Work, Chapel Hill,
NC: Pages 175-186 (“GroupLens”)
The ‘420 Patent is patentably distinct from GroupLens for many reasons. For example,
GroupLens does not disclose “filtering the informons . . . for relevance to the query” as recited in
claims 10 and 25. The GroupLens string search facilities, kill files, and Boolean operators (cited
by Defendants as meeting this element) do not filter items for relevance to a query received from
an individual user. See, e.g., GroupLens at 2-3. Additionally, GroupLens does not disclose

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“combining pertaining feedback data . . . with the content profile data in filtering each informon
for relevance to the query” as recited in claims 10 and 25. The feedback in GroupLens is a rating
of how well a user liked an item (1-5). See, e.g., GroupLens at 7, 9. Moreover, GroupLens does
not “combine” the features that Defendants allege meet each of the “feedback data” and the
“content profile data,” because the cited features relate to completely different systems.
GroupLens is a collaborative system. Because GroupLens does not disclose all of the limitations
of claims 10 and 25, GroupLens cannot disclose all of the limitations recited by claims 14, 15,
27, and 28.
The ‘664 Patent is patentably distinct from GroupLens for many reasons. For example,
GroupLens does not disclose “receiving information found to be relevant to the query by other
users.” GroupLens’s feedback is an indication of how well a user liked an item (1-5). See, e.g.,
GroupLens at 7, 9. Further, GroupLens does not disclose “combining the information from the
feedback system with the information from the scanning system and . . . filtering the combined
information for relevance to at least one of the query and the first user” or “combining the
information found to be relevant to the query by other users with the searched information [and]
. . . filtering the combined information for relevance to at least one of the query and the first
user” as recited in claims 1 and 26, respectively. Because GroupLens does not disclose the two
component parts (as described above), it consequently fails to disclose combining those two
components of information. Moreover, GroupLens does not “combine” the features that
Defendants allege meet each of the two components because the cited features relate to
completely different systems. GroupLens is a collaborative system. Because GroupLens does
not disclose all of the limitations of claims 1 and 26, GroupLens cannot disclose all of the
limitations recited by claims 5, 6, 21, 22, 28 and 38.

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INTERROGATORY NO. 14:
Set forth in specific detail each fact, opinion, argument, inference, and DOCUMENT that
supports YOUR contention, if YOU so contend, that the PATENTS-IN-SUIT are not anticipated
or rendered obvious by the PRIOR ART references cited by Google in its supplementary
response to Plaintiff’s Interrogatory No. 8, served on February 13, 2012 (including any
amendments or supplementation thereof), including the name, address and telephone number of
each person who has firsthand knowledge or possession of each such fact, opinion, and
DOCUMENT.
RESPONSE:
Plaintiff incorporates its general objections and specific objections. I/P Engine objects to
this Interrogatory to the extent it seeks information that is protected by the attorney-client
privilege, the work product doctrine, Rule 26(b)(4)(B) immunity, or any other applicable
privilege or immunity. I/P Engine further objects to this Interrogatory to the extent that it seeks a
legal conclusion or information not in I/P Engine’s possession, custody or control. I/P Engine
further objects to this Interrogatory as premature to the extent that it seeks expert opinion
evidence or I/P Engine’s claim construction positions, which will be provided in accordance with
the Federal Rules of Civil Procedure, the Local Rules of the Court, or the Court’s scheduling
orders, or any other than I/P Engine’s present contentions, which are subject to development as
discovery proceeds. I/P Engine further objects to this Interrogatory as unduly burdensome to the
extent that it is Defendants’ burden to plead and prove invalidity by clear and convincing
evidence including establishing any motivation to combine references. I/P Engine further
objects to this Interrogatory as it has multiple, unrelated subparts whereby Google is attempting
to exceed the interrogatory limit set by the Federal Rules of Civil Procedure and this Court.

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“Defendants may not seek, in a single interrogatory, specific responses for every piece of prior
art.” Orion IP, LLC v. Staples, Inc., et al., No. 2:04-CV-00297, D.I. 171 at 1-2 (E.D. Tex. July 7,
2005) (“While Defendants may seek, in separate interrogatories, specific responses regarding
specific pieces of prior art, or may seek, in a single interrogatory, a general response regarding
all identified prior art, Defendants may not seek, in a single interrogatory, specific responses for
every piece of prior art. Such an interrogatory would burden the Plaintiff and dramatically
expand the number of interrogatories.”). Responding to this Interrogatory as drafted would
exceed the permitted number of Interrogatories.
Subject to and without waiving the foregoing objections, I/P Engine responds:
I/P Engine hereby incorporates its response to Interrogatory No. 13 and submits that its
response to this Interrogatory is included therein.

Dated: March 22, 2012

By:
/s/ Charles J. Monterio, Jr.
Jeffrey K. Sherwood
Frank C. Cimino, Jr.
Kenneth W. Brothers
DeAnna Allen
Charles J. Monterio, Jr.
DICKSTEIN SHAPIRO LLP
1825 Eye Street, NW
Washington, DC 20006
Telephone: [phone]
Facsimile: [phone]
Counsel for Plaintiff I/P Engine, Inc.

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CERTIFICATE OF SERVICE
I hereby certify that on this 22nd day of March, 2012, the foregoing PLAINTIFF
I/P ENGINE, INC.’S RESPONSES AND OBJECTIONS TO DEFENDANT GOOGLE,
INC.’S THIRD SET OF INTERROGATORIES, was served via email, on the following:
Stephen Edward Noona
Kaufman & Canoles, P.C.
150 W Main St
Suite 2100
Norfolk, VA 23510
[e-mail]
David Bilsker
David Perlson
Quinn Emanuel Urquhart & Sullivan LLP
50 California Street, 22nd Floor
San Francisco, CA 94111
[e-mail]
[e-mail]
Robert L. Burns
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
Two Freedom Square
11955 Freedom Drive
Reston, VA 20190
[e-mail]
Cortney S. Alexander
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
3500 SunTrust Plaza
303 Peachtree Street, NE
Atlanta, GA 94111
[e-mail]
/s/ Armands Chagnon
Senior Paralegal

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