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

Filing 162

NOTICE by Google Inc. of Filing of Unredacted Exhibit P to the Kammerud Declaration in Support of Google's Reply Brief in Support of its Motion to Compel Conception, Reduction-to-Practice and Priority Dates, and Unredacted Reply Brief in Support of Google's Motion to Compel Conception, Reduction-to-Practice and Priority Dates (Attachments: # 1 Exhibit 1, # 2 Exhibit 2)(Noona, Stephen)

Exhibit 2

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF VIRGINIA
NORFOLK DIVISION

I/P ENGINE, INC.
Plaintiff,
v.

Civil Action No. 2:11-cv-512

AOL, INC., et al.,

UNREDACTED
Defendants.

REPLY BRIEF IN SUPPORT OF GOOGLE’S MOTION TO COMPEL PLAINTIFF TO
PROVIDE CONCEPTION, REDUCTION-TO-PRACTICE, AND PRIORITY DATE
INFORMATION
I.

INTRODUCTION
Google’s Motion to Compel responses to its Interrogatories that seek conception,

reduction-to-practice, and priority dates from Plaintiff is not “unnecessary and moot” due to
Plaintiff’s supplemental responses as I/P Engine argues. (Opp. Br. at 1). Rather, I/P Engine’s
supplemental responses are infirm for the same reasons that Google identified to I/P Engine
before its Motion and addressed in Google’s Motion: they still do not provide specific priority,
conception, and reduction-to-practice dates for the Asserted Patents.
I/P Engine improperly argues it should be excused from providing a response with these
dates because it has supplemented its responses to identify documents under Rule 33(d). A
party, however, may rely on Rule 33(d) only when “the burden of deriving or ascertaining the
answer will be substantially the same for either party.” While Plaintiff argues that “Google is
now in the same position with the same documents as I/P Engine,” this is incorrect. As Google

indicated in its Motion to Compel and to Plaintiff before Google filed that Motion, both named
inventors are I/P Engine’s employees or consultants, thus providing it unfettered access to the
very people – the only people – who undeniably have the ability to provide the requested precise
conception, reduction-to-practice, and priority date information. Google does not have this
access.
Moreover, the documents that Plaintiff points to in its responses demonstrate Rule 33(d)
is inapplicable here. For example, of the 1,772 pages Plaintiff points to in its purported response
to these Interrogatories, 1,589 pages are simply the prosecution history of the Asserted Patents
that give no clue as to what Plaintiff contends are the priority, conception, or reduction-topractice dates of the Patents. Nearly one third of the remaining documents are undated,
rendering them useless for the information Google seeks as well. The remainder of the
documents, manuals or product specifications for various WiseWire or Lycos programs, have no
cognizable relevance either given that Plaintiff does not contend any WiseWire or Lycos ever
embodied or product ever embodied or practiced the Asserted Patents. In short, the documents
pointed to by Plaintiff fail to provide an answer to Google’s Interrogatories.
Ironically, Plaintiff’s supplemental responses did point to one document, a “Disclosure of
Invention,” that has a “conception date” and “reduction to practice date” on it. But 3 days after
Plaintiff filed its Opposition, Plaintiff indicated it planned to remove from its supplemental
responses any reference to this document. As discuss below, because this document references
dates that materially pre-date the filing of the parent patent’s application, it appears that Plaintiff
realized that any reliance on this document for a date of conception and/or reduction to practice
would effectively amount to admission that the Asserted Patents are invalid for public disclosure
under 35 U.S.C. § 102(b). Not only does this about face highlight that the documents Plaintiff

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relies on under 33(d) are insufficient to provide the information that Google seeks, it
demonstrates the need for a definite response now, so that I/P Engine may not be allowed to alter
its priority date throughout the case for strategic purposes as it sees fit.
As to the case law, I/P Engine suggests that Google’s cited cases are based on the
Northern District of California Rules. This is clearly false; none of the holdings in those cases
actually rely on those rules. Nor do any of the cases I/P Engine cites support its position.
Accordingly, Google’s Motion to Compel should be granted.
II.

ARGUMENT
A.

I/P Engine’s Supplemental Interrogatory Responses Do Not “Moot” Google’s
Motion to Compel as They Still Do Not Identify a Specific Priority Date, or
Conception or Reduction-to-Practice Dates.

Google’s Motion to Compel seeks a definite priority date in response to Interrogatory
No. 9. As with its prior response, I/P Engine’s supplemental interrogatory response does not
provide this information. Instead, I/P Engine’s response to Interrogatory No. 9 states that “each
of the asserted claims of the patents-in-suit are entitled to a priority date at least as early as the
effective date of the ‘420 patent, i.e., December 3, 1998.” It then goes on to state that “each of
the asserted claims of the patents-in-suit may be entitled to an earlier effective date based on,
without limitation, the filing of earlier related patent applications.” (Opp. Br., Ex. 5 at 14
(emphasis added).) As its prior response, by placing the priority date is “at least as early as”
December 3, 1998, which means that the priority date could be any date on or before December
3, 1998. Cf. Invacare Corp. v. Sunrise Med. Holdings, Inc., No. 04-1439, 2005 WL 1750271, *4
(N.D. Ohio Jan. 21, 2005) (“Plaintiff's responses are essentially non-responses in that they
entirely leave open the critical time period, i.e., the earliest date on which the invention was
conceived and reduced to practice. For example, plaintiff responded that the invention was

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conceived ‘at least August 1997’ [sic]. Obviously, this response could be read to mean a date of
1995, 1994 or even earlier.”) (emphasis in original).1
Google’s Motion to Compel also seeks a definite response to Interrogatory No. 1 as to the
Asserted Patents’ conception date, reduction-to-practice date, or any individuals involved in
conception or reduction to practice. I/P Engine’s supplemental response still does not provide
any of this information.
B.

I/P Engine’s Reliance on Rule 33(d) Is Improper and Insufficient.

For both its supplemental responses to Interrogatory Nos. 1 and 9, Plaintiff states that
“I/P Engine, and third parties, have produced documents from which information responsive to
this Interrogatory may be derived or ascertained” and lists the same 1,772 pages of documents.
(Opp. Br., Ex. 2 at 4, 14). Plaintiff's reliance on these documents is improper for several reasons.
1.

To the extent it is possible at all, the burden of ascertaining a concrete
response from the cited documents is not the same for Plaintiff and
Google.

Initially, Rule 33(d) may only be invoked when “the answer to an interrogatory may be
determined by examining, auditing, compiling, abstracting, or summarizing a party's business
records (including electronically stored information), and if the burden of deriving or
ascertaining the answer will be substantially the same for either party.” Even if the documents

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I/P Engine attempts to distinguish Invacare on the ground that “the cited documents
[in Invacare] contradicted the language of ‘at least as early as’ by suggesting a date later than the
provided date.” (Opp. Br. at 3). Yet, the Invacare court rejected defendant’s argument that
plaintiff’s interrogatory responses were insufficient merely because the asserted conception date
was inconsistent with the cited documents. See Invacare, 2005 WL 1750271 at *4 (“With regard
to the disparity between the documentary evidence and the dates provided, the Court agrees with
plaintiff.”) Rather, as recited above, Invacare held that plaintiff’s interrogatory responses were
insufficient because they used vague “as early as” language that provided no certainty as to the
asserted dates. Such is the case here – I/P Engine’s position that the priority date is “at least as
early as” December 3, 1998 provides no certainty as to the actual priority date that I/P Engine
asserts.

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pointed to by I/P Engine contained within them the information Google seeks (which is doubtful
as noted below) , I/P Engine cannot meet this standard here because it is only with information
from both named inventors – who are employees or consultants of Plaintiff – that a complete
response to Google’s Interrogatories could be derived. Because of its relationship with both
inventors , I/P Engine should easily be able to provide definite dates in response to Interrogatory
Nos. 1 and 9.
By contrast, I/P Engine’s decision to identify documents instead of providing this
information imposes a significant burden on Google. Even after reviewing the 1,772 pages of
documents identified by I/P Engine, Google cannot ascertain I/P Engine’s contentions on when
conception and reduction to practice occurred, and the priority date this subject – which is what
Interrogatory Nos. 1 and 9 request. The identification of documents simply does not provide the
definite explanation of I/P Engine’s view on the subject such contention interrogatories require.
See Boston Sci. Corp. v. Micrus Corp., No. 04-4072, 2007 WL 174475, *1 (N.D. Cal. Jan. 22,
2007) (“Although this interrogatory was not phrased as a contention interrogatory per se, it does
request Boston Scientific to “identify” the date of conception; as such, it reasonably calls for
Boston Scientific to disclose its view as to when the inventions were conceived.”) (emphasis in
original); Fresenius Med. Care Holding Inc. v. Baxter Intern., Inc., 224 F.R.D. 644, 650 (N.D.
Cal. 2004) (a plaintiff must directly state a patents’ alleged conception and reduction-to-practice
dates in response to interrogatories seeking this information, and cannot merely identify
documents in response to such interrogatories).
2.

The documents Plaintiff points to do not reveal conception, reduction-topractice, or priority dates.

Initially, 1,589 pages of the documents that I/P Engine points to in its supplemental
responses contain the prosecution histories of the patents-in-suit. Included in these file histories

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are a myriad of office actions, correspondence, and other documentation. Plaintiff provides no
indication as to what in the prosecution histories supposedly supports Plaintiff’s unidentified
priority, conception or reduction-to-practice dates, whether it is relying on an earlier application
for an earlier priority date, or anything else. As invocation of Rule 33(d) "requires first that the
information actually be obtainable from the documents," Plaintiff’s use of Rule 33(d) is
improper. See In re Sulfuric Acid Antitrust Litigation, 231 F.R.D. 320, 325-26 (N.D. Ill. 2005)
(granting motion to compel where answering party had not shown that burden of ascertaining
answer was substantially the same for both parties or that a complete answer could be found in
the documents).
The remaining 183 pages of documents identified in Plaintiff’s Supplemental Response
comprise 22 discrete documents. Nine of these documents have no date at all. Given that these
documents have no dates, Plaintiff cannot credibly say that the burden is substantially the same
on Google to ascertain the priority, conception, or reduction-to-practice dates from these
documents. Indeed, it is unclear how these undated documents are relevant to these issues at all.
The documents that actually do have dates on them also provide no answers to Google's
Interrogatories either. They appear to concern various products and projects from WiseWire and
Lycos from 1997-1998. Most of these documents appear to be manuals or product specifications
for various WiseWire or Lycos programs such as the following examples:
•

Program specifications, with a "Last Spec Change Date" of November 25, 1998, for the
"Tree Export" program, a WiseWire command line program that produces files
specifying the structure for a specific tree, for use by WiseWire clients including Lycos
and others (see Kammerud Decl. at Ex. L (IPEL0001270-1273));

•

Program specifications, with "Last Spec Change Date" of July 15, 1998, for two
programs, "QueryGen.exe," which reads text input files and generates a query file, and
"HotListGen.exe," which reads that query file and executes the queries against one or
more internet search engines (see Kammerud Decl. at Ex. M (IPEL0001395-1399));

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•

A document dated January 6, 1998, describing a WiseWire tool called "Usage Analyzer,"
which is used "to process WiseWire's web server log files and to populate Oracle
databases with usage statistics for use by the Client Relationship Manager and for client
billing purposes" (See Kammerud Decl. at Ex. N (IPEL0001557-1561)).

These documents bear no apparent relationship to the Asserted Patents. They certainly do not
provide any basis for Google to ascertain I/P Engine’s contended priority, conception, or
reduction-to-practice dates for the Patents.
Further, the inclusion of WiseWire product manuals and specifications is puzzling given
I/P Engine's Response to Interrogatory No. 5, which requests that I/P Engine identify any
product or software that practices or practiced any claim of the patents-in-suit or that embodies
any invention claimed in the patents-in-suit. (Motion, Kammerud Decl. at Ex. A). I/P Engine
does not identify any WiseWire or Lycos product or software in response to Interrogatory No. 5.
Thus, it is unclear how technical documents for WiseWire products have any relationship to the
patents-in-suit, let alone how Google can use such documents to ascertain I/P Engine's
contentions as to the conception, reduction-to-practice, or priority dates of the Patents.
Notably, each of the dated documents from this set predates December 3, 1998 – the
filing date of the '420 Patent. This suggests that, although I/P Engine now states that the priority
date is "at least as early as" December 3, 1998, it may likely seek a priority date earlier than that.
3.

Plaintiff seeks to remove an “Invention Disclosure” from its responses that
would demonstrate the Patents’ invalidity for public disclosure under
102(b).

Moreover, Plaintiff has now removed the only document among those identified that
actual does provide any conception or reduction-to-practice date. After Plaintiff filed its
Opposition, on March 1, 2012, Plaintiff’s counsel sent an email indicating that Plaintiff intends
to again supplement its responses in order to delete certain documents from its responses to

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Interrogatory Nos. 1 and 9. (Kammerud Decl., Ex. O). In other words, Plaintiff itself has
already revised the very response that Plaintiff represented was adequate just a week ago.
One of these documents is a "Disclosure of Invention" listing Mr. Lang as the inventor
and stating, "The work is the Ph.D. thesis of the inventor, Ken Lang. In this research project,
called ‘NewsWeeder,’ Ken has applied traditional machine learning techniques to the domain of
learning how to filer netnews articles on the internet." (See Kammerud Decl. at Ex. P
(LANG0007021-7028)). It states the date of "conception" of the invention is 11/1/92;
"completion of working model (or operational process)" was 10/1/94, that the invention was
disclosed in a "printed publication" in 7/8/95, and other even earlier oral disclosures. It goes on
to state:
A pre-print of a research paper that will be published in the 7/8/95 Conference on
Machine Learning has been available since 3/15/95 on the World-Wide Web.
Many people have downloaded copies since then. There have been no
confidentiality agreements made regarding the information concerning this work.
(Id. at LANG0007023.) Given that Plaintiff did not apply for the patent until December 3, 1998,
an oral disclosure in 1993 and a printed publication in 1995 would invalidate the patent under 35
U.S.C. § 102(b), which provides that an invention is not patentable if “the invention was
patented or described in a printed publication in this or a foreign country or in public use or on
sale in this country, more than one year prior to the date of the application for patent in the
United States.” While Plaintiff saw fit to rely on this document to show the Court it was
providing conception and reduction-to-practice dates for the Asserted Patents, it has apparently
now thought the better of it, likely recognizing reliance on this document to show these dates is
an admission that the Patents are invalid.
That I/P Engine would point to a document with conception and reduction-to-practice
dates to argue that its interrogatory response is sufficient, only to remove that documents days

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later, shows why Google’s Motion must be granted. Plaintiff should be ordered to provide a
response with actual dates. Alternatively, Plaintiff should be forced to stick with its initial
supplemental response which included the above document – a document that Plaintiff
represented to the Court provided the conception and reduction to practice of the Asserted
Patents and which seemingly renders the Patents invalid under 35 U.S.C. § 102(b).
C.

The Parties Did Not Agree That Identification of Documents Pursuant to
Rule 33(d) Would Provide Sufficient Responses to Interrogatory Nos. 1 and
9.

Also unfounded is I/P Engine’s suggestion that the parties had any agreement by which
I/P Engine could respond to Interrogatory Nos. 1 and 9 by identifying documents under Rule
33(d). (See Opp. Br. at 4). There was no such agreement. Rather, as explained in the
Background section of Google’s Motion to Compel, Google repeatedly made clear during the
meet-and-confer process that I/P Engine must provide a definite priority date in response to
Interrogatory No. 9 and must respond to Interrogatory No. 1 without relying on Rule 33(d). (See
Opening Br. at 4-6).
Concurrent with their meet-and-confer efforts over Interrogatory Nos. 1 and 9, the parties
did agree on a date by which they would identify specific documents for all the interrogatories
that they intended to respond to through Rule 33(d). But Google never agreed that a Rule 33(d)
response would be sufficient for Google’s Interrogatory Nos. 1 and 9. In fact, during the parties’
meet and confer conferences on this issue, Google explicitly stated that identifying documents
was not sufficient to answer these Interrogatories, and that full responses required the provision
of the specific dates requested. (See, e.g., Kammerud Decl., Ex. Q at 2).

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D.

The Duty to Supplement Does Not Excuse Plaintiff’s Obligation to Provide a
Response Now.

I/P Engine argues that “[a] party may supplement an interrogatory response requesting
priority date information, if necessary, when further information becomes available based on its
investigation” (Opp. Br. at fn. 1) and “[n]umerous courts have held that supplementing
interrogatory responses regarding priority, conception, or reduction to practice is acceptable and
even required.” (Id. at fn. 2). This argument attacks a straw-man. Regardless of whether the
parties may supplement their respective interrogatory responses under appropriate circumstances
later in this matter, Plaintiff must state its current knowledge and contentions as to the priority,
conception, and reduction-to-practice to dates.
E.

Plaintiff Fails to Rebut Google's Cited Authority; Plaintiff's Authority Is
Inapposite.

I/P Engine argues that Google’s citation to the Fresenius and Boston cases is an attempt
“to import the Northern District of California patent rules” to this case. (Opp. Br. at 6). This
position is incredible. First, the Boston case does not even mention the Northern District of
California’s local patent rules, much less rely on these local rules to support its holding that a
plaintiff must directly state the asserted patents’ conception and reduction-to-practice dates.
2007 WL 174475.
Further, Fresenius’s central holding is that the patentee must directly provide conception
and reduction-to-practice dates without resort to Rule 33(d). It based this holding on the fact that
the patentee’s close relationship with the inventors gave it a comparative advantage in
ascertaining the dates of conception and reduction to practice, rendering Rule 33(d) inapplicable.
See 224 F.R.D. at 650. Such is the case here: both named inventors are employees or consultants
of I/P Engine, and I/P Engine can use its contacts with these inventors to directly state the dates
when the Patents were allegedly conceived and reduced to practice. Fresenius did not rely at all
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on the local patent rules to reach this holding. Instead, Fresenius invoked the local patent rules
only to dispose of the patentee’s argument that it was premature to serve an interrogatory seeking
dates for conception and reduction to practice. See id.
I/P Engine relies heavily on Sprint Comm’ns Co. v. Big River Tel. Co., No. 08-2046,
2009 U.S. Dist. Lexis 47238 (D. Kan. June 4, 2009) in arguing that its “at least as early as”
response is proper. (See Opp. Br. at 2, 4). But I/P Engine reads a holding into Sprint that does
not exist.
In Sprint, Defendants moved to compel a narrative response describing the circumstances
of conception and due diligence rather than a mere identification of documents on these topics.
See 2009 U.S. Dist. Lexis 47238 at *8 (“Big River challenges Sprint’s response as incomplete,
suggesting Sprint should have provided a written description of the ‘due diligence’ and the
circumstances surrounding the alleged conception of the claimed inventions.”) While the
Plaintiff’s interrogatory response in that case did use language stating that conception occurred
“at least as early as about October 1993,” that was not the subject of Defendants’ motion. See id.
at *7. Thus, the Sprint court did not decide, and no reason to decide whether plaintiff’s asserted
conception date of “at least as early as about October 1993” was proper. I/P Engine’s argument
that the Sprint court endorsed “at least as early as” language is simply false.
I/P Engine also cites Monsanto Co. v. E.I Du Pont De Nemours and Co., No. 09-686,
2011 WL 2119397 (E.D. Mo. May 26, 2011). But in Monsanto the plaintiff did not, like I/P
Engine, refuse to provide any specific priority dates or use the “at least as early” language that
I/P Engine does here. See id. at *3. (allowing plaintiff to “argue in the alternative” for two
specific priority dates.). Thus, Monsanto is of no help to I/P Engine’s position either.

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III.

CONCLUSION
For the foregoing reasons, Google respectfully requests that the Court compel Plaintiff to

provide definite priority dates in response to Google’s Interrogatory No. 9. Google also
respectfully requests that Court compel Plaintiff to provide definite conception dates, reductionto-practice dates, and the names of the individuals involved in conception and reduction-topractice in response to Interrogatory No. 1, without resort to the procedures of Rule 33(d).

DATED: May 8, 2012

/s/ Stephen E. Noona
Stephen E. Noona
Virginia State Bar No. 25367
KAUFMAN & CANOLES, P.C.
150 West Main Street, Suite 2100
Norfolk, VA 23510
Telephone: [phone]
Facsimile: [phone]
[e-mail]
David Bilsker
David A. Perlson
QUINN EMANUEL URQUHART &
SULLIVAN, LLP
50 California Street, 22nd Floor
San Francisco, California 94111
Telephone: [phone]
Facsimile: [phone]
[e-mail]
[e-mail]
Attorneys for Google Inc.

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CERTIFICATE OF SERVICE
I hereby certify that on May 8, 2012, I will electronically file the foregoing with the Clerk
of Court using the CM/ECF system, which will send a notification of such filing (NEF) to the
following:
Jeffrey K. Sherwood
Kenneth W. Brothers
DICKSTEIN SHAPIRO LLP
1825 Eye Street NW
Washington, DC 20006
Telephone: [phone]
Facsimile: [phone]
[e-mail]
[e-mail]
Donald C. Schultz
W. Ryan Snow
Steven Stancliff
CRENSHAW, WARE & MARTIN, P.L.C.
150 West Main Street, Suite 1500
Norfolk, VA 23510
Telephone: [phone]
Facsimile: [phone]
[e-mail]
[e-mail]
[e-mail]
Counsel for Plaintiff, I/P Engine, Inc.

Stephen E. Noona
Virginia State Bar No. 25367
KAUFMAN & CANOLES, P.C.
150 West Main Street, Suite 2100
Norfolk, VA 23510
Telephone: [phone]
Facsimile: [phone]
[e-mail]
Counsel for Google Inc.,
Target Corporation,
IAC Search & Media, Inc., and
Gannet Co., Inc.

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/s/ Stephen E. Noona
Stephen E. Noona
Virginia State Bar No. 25367
KAUFMAN & CANOLES, P.C.
150 West Main Street, Suite 2100
Norfolk, VA 23510
Telephone: [phone]
Facsimile: [phone]
[e-mail]
11581815_1.DOC

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