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

Filing 147

Declaration re 145 Opposition (of Emily O'Brien) in Support of Google Inc.'s Opposition to Plaintiff's Motion to Compel Google's Custodial Document Production by Google Inc.. (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, # 9 Exhibit I, # 10 Exhibit J, # 11 Exhibit K, # 12 Exhibit L, # 13 Exhibit M, # 14 Exhibit N, # 15 Exhibit O, # 16 Exhibit P, # 17 Exhibit Q, # 18 Exhibit R, # 19 Exhibit S, # 20 Exhibit T, # 21 Exhibit U, # 22 Exhibit V, # 23 Exhibit W, # 24 Exhibit X, # 25 Exhibit Y)(Noona, Stephen)

quinn emanuel

trial lawyers | san francisco

50 California Street, 22nd Floor, San Francisco, California 94111-4788 | TEL: [phone] FAX: [phone]

April 3, 2012

Charles Monterio
[e-mail]

Re:

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

Dear Charles:
I write to confirm our April 2 meet-and-confer telephone conference. Thank you for taking the
time to speak with us yesterday regarding a variety of outstanding discovery issues.
Laches
We discussed the deficiencies of Plaintiff’s response to Interrogatory No. 15. You stated, as
outlined in your email from earlier in the day, that you believe that it is Google’s burden to first
establish Plaintiff knew or should have known of Defendants’ infringing activity for at least six
years prior to bringing suit. And that until Google produces this evidence, Plaintiff will not
supplement its interrogatory response. As we explained, for purposes of laches, “delay begins
when the plaintiff knew, or in the exercise if reasonable diligence should have known, of the
defendant’s allegedly infringing activity.” Eastman Kodak Co. v. Goodyear Tire & Rubber Co.,
114 F.3d 1547, 1559 (Fed. Cir. 1997) (emphasis added). “Reasonable diligence” requires that a
patentee investigate “pervasive, open, notorious activities that a reasonable patentee would
suspect were infringing.” Wanlass v. Gen. Elec. Co., 148 F.3d 1334, 1338 (Fed. Cir. 1998).
“For example, sales, marketing, publication, or public use of a product similar to or embodying
technology similar to the patented invention, or published descriptions of the defendant’s
potentially infringing activities, give rise to a duty to investigate whether there is infringement.”
Id.
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Judged by this standard, Plaintiff (and/or its predecessors in interest) had a duty to investigate
Google’s activities before September 2005 – i.e., more than six years before the filing of suit.
Google’s activities were certainly “pervasive” and “open” by this date; Google’s search engine
was highly popular and well-known. Furthermore, Google’s use of click-through rate in
AdWords was publicly known before September 2005. See, e.g., Catherine Seda, “In the Click:
Want All the Right People to Notice Your Business?”, Entrepreneur (Aug. 1, 2004) (2004
WLNR 22262190 ) (“On Google AdWords, positions are given based on the combination of bid
amount and click-through rate. That means the highest bid doesn’t automatically get the numberone spot. Consumers are part of the voting process”). Likewise, Google’s ad disabling based on
ad content (the apparently alleged “content-based filtering” under Plaintiff’s infringement
contentions) was publicly known before September 2005. See, e.g., Paul Piper, “Google Spawn:
The Culture Surrounding Google,” Searcher (June 1, 2004) (2004 WLNR 11617015) (“Google
apparently filters some AdWords. Searches for guns, knives, tobacco, liquor, and related
materials yield no AdWords.”).
Thus, under the Federal Circuit’s laches caselaw, Plaintiff’s duty to investigate Google’s
activities attached before September 2005 – i.e., more than six years before the filing of suit. It
follows that Plaintiff’s delay in bringing suit lasted more than six years for the purposes of
laches, thereby raising a presumption of laches and imposing on Plaintiff a duty to show that its
delay was reasonable. Please let us know after you have reviewed this case law whether Plaintiff
will supplement its response to Interrogatory No. 15, or if we are at an impasse regarding this
issue.
Deposition Dates
On March 13, we asked I/P Engine to look into available dates in April for the depositions of Mr.
Lang and Mr. Kosak, but you proposed dates in mid-May. In our additional correspondence on
this issue, you indicated that neither witness was available any earlier. During our call, you
stated that the parties’ discovery plan anticipated that each inventor would be deposed for two
consecutive days, for a total of no more than 14 hours, by all defendants. While we mentioned
that the discovery plan didn’t to our knowledge state that the depositions would be for
consecutive days, we are willing to be reasonable and work with Plaintiff to schedule depositions
of the inventors. But as we explained on yesterday’s phone call, we hope to depose at least one
of the inventors for at least one day before the parties’ reply briefs on claim construction are due
on May 3. You agreed to look into this issue further. Please let us know whether that can be
arranged.
We note that several hours after the meet and confer, you served separate damages and liability
30(b)(6) notices on every defendant. Each of these notices included dates in late April or early
May at your offices in Washington, D.C. We can only assume that these dates are place-holders,
and that Plaintiff does not expect each Defendant to provide a corporate witness on all of
Plaintiff’s topics in April and early May when Plaintiff has to date refused to provide even one
witness for one day in this time frame. While Defendants will serve objections and responses in
a timely fashion, please note that Defendants object to both the dates and locations of these
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notices and will meet and confer to discuss scheduling further.
Vringo Documents
You confirmed that you produced publicly available documents related to the VringoInnovate/Protect merger on March 16, but stated that you did not search for documents other
than those available on the website because of the parties’ agreement that documents after the
litigation filing date would not be collected or produced. We stated that our understanding was
that this time limitation was for custodial documents only. In any event, the agreement regarding
production relates to the parties’ productions, not to third parties; you have repeatedly asserted
that Innovate/Protect is not a party in this matter, including in your December 13, 2011 letter on
behalf of Innovate/Protect.
You agreed to look into this issue further and get back to us, including because you were unsure
what non-custodial responsive documents might exist. We note that to the extent any documents
are in the possession, custody or control of IP Engine, these documents are responsive to several
of Google’s Requests for Production, including RFP No. 54, which requests “[a]ll
DOCUMENTS concerning any proposed merger, acquisition, or sale of substantially all of the
assets of I/P ENGINE or its PREDECESSORS IN INTEREST, including ALL DOCUMENTS
concerning any diligence, presentations, proposals, term sheets and letters of intent relating to the
same.” They are also responsive to RFP No. 56 in the subpoena to Innovate/Protect, which seeks
documents “concerning any proposed merger, acquisition, or sale of substantially all of the assets
of INNOVATE/PROTECT, I/P ENGINE, or the PREDECESSORS IN INTEREST, including
ALL DOCUMENTS concerning any diligence, presentations, proposals, terms sheets and letters
of intent relating to the same.” We look forward to hearing from you on this issue, including
confirmation that you will conduct a search for responsive documents.
In addition, we asked whether Plaintiff plans to claim privilege over pre-merger documents
exchanged between the companies (Innovate/Protect and Vringo), and you stated that you would
look into this issue as well.
Dates of Production
You confirmed that I/P Engine will plan to produce the remainder of its responsive documents,
including emails, on or before April 20. We confirmed that Google will plan to produce the
agreed-upon technical videos and prior AdWords litigation documents by April 20. With respect
to Google’s custodial production, we indicated that we will have a better idea of an estimated
completion date at the end of this week and will give you our estimate then. We also reiterated
that we would produce custodial documents on a rolling basis, and intended to prioritize those
custodians listed in Google’s initial disclosures. We indicated that if I/P Engine wished to have
certain custodians prioritized, we would be willing to work with you to accommodate such a
request. You also confirmed that if you could resolve a potential “false hit” issue regarding the
Hudson Bay documents, you would try to produce all of Hudson Bay’s responsive documents by
April 20. We agreed to continue to keep each other updated on the status of production, and
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continue to work together in a cooperative fashion on discovery. As always, Google will roll
production in an effort to get the documents to you as quickly as possible.
ESI Agreement
We asked whether Plaintiff agreed to our proposed language regarding sent or received custodial
emails. You stated that you were “ninety-nine percent sure” that Plaintiff agreed, and that you
will confirm this in writing.
With respect to the IM issue, we reiterated that the parties had already reached agreement on the
IM provision in December. There was never an agreement that the provision was contingent on
Google’s providing additional information. We explained that, in the event that this becomes an
issue in the future, we can meet and confer at that time, per the language in the IM provision.
Stipulation
We told you that Google is still not in a position to agree to Plaintiff’s proposed stipulation
regarding liability and damages for the non-Google defendants’ use of AdSense for Search. We
also noted that the draft stipulation contains a provision withdrawing claims for AOL’s use of
AOL.com Advertising Sponsored Listings and IAC’s use of Ask Sponsored Listings. We noted
that AOL’s and IAC’s use of their own systems are unrelated to Google AdWords and AdSense
for Search. We therefore asked if Plaintiff would agree to withdraw its claims against these
unrelated systems, regardless of whether the parties entered a stipulation regarding Google’s
systems. You declined to do so, explaining that you were offering that provision only to “move
the ball forward” on the other parts of the stipulation. We do not understand this position. If for
example, Plaintiff believes it has a valid claim against IAC’s Ask Sponsored Listings, then it
should supplement its infringement contentions to demonstrate those claims—as repeatedly
requested by IAC, including in Google’s and IAC’s pending Motion to Compel. If Plaintiff is
willing to withdraw its claim, then it should go ahead and do so regardless of the pending claims
against the Google systems.
We also discussed whether, separate from a stipulation, Plaintiff would agree to streamline the
lawsuit by withdrawing without prejudice its claims against the non-Google defendants. You
indicated that the stipulation was necessary to avoid having a separate, later litigation against the
other defendants on liability and damages, and in order to bind Google’s damages expert to the
position that in the hypothetical negotiation the appropriate revenue base would be all of
Google’s revenue—including the revenues paid to third parties. We explained that the
stipulation does not make sense, as we had previously articulated. We agreed to discuss your
position with Google again, and reconfirm that Google would not agree to the stipulation. We
have done so, and can confirm.

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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,

Jen Ghaussy
cc:

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