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

Filing 180

Declaration re 179 Opposition, of Jennifer Ghaussy in Support of Defendants' Opposition to Plaintiff's Motion for Leave to Take 30(b)(1) Depositions 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, # 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)(Noona, Stephen)

EXHIBIT N

Jen Ghaussy
From:
Sent:
To:
Cc:
Subject:

Monterio, Charles [[e-mail]]
Monday, June 25, 2012 5:20 PM
David Perlson
QE-IP Engine; 'Noona, Stephen E.'; zz-IPEngine; 'Donald C. Schultz'; 'W. Ryan Snow'; '[e-mail]'
RE: Plaintiff's Response to Interrogatory No. 1

David,
We will supplement our response to Interrogatory No. 1 as recited below.
With respect to the deposition issue, we will proceed to file our motion.
Charles

From: David Perlson [mailto:[e-mail]]
Sent: Monday, June 25, 2012 6:16 PM
To: Monterio, Charles
Cc: QE-IP Engine; 'Noona, Stephen E.'; zz-IPEngine; 'Donald C. Schultz'; 'W. Ryan Snow'; '[e-mail]'
Subject: RE: Plaintiff's Response to Interrogatory No. 1

Charles, if I understand your recent email correctly, Plaintiff agrees to provide a verified Supplemental
Response to Interrogatory No. 1 that would state as follows:
“I/P Engine’s present contention is that the constructive reduction to practice date is the effective date of the
‘420 patent, i.e., December 3, 1998 (based on the filing date of the patent application, U.S. Patent Application
No. 09/204,149, that issued as the ‘420 patent).
After a reasonable investigation of available information including a review of the documents identified in
Plaintiff’s First Supplemental Response to Interrogatory No. 1 and discussions with named inventors Andrew
K. Lang and Donald Kosak, Plaintiff is not aware of evidence sufficient to form a contention as to the
conception of, or any reduction to practice activities related to, the patents-in-suit prior to December 3, 1998.”
We agree to this compromise assuming Plaintiff will provide this response within 7 days. Please confirm.
Regarding the deposition issue, we do not think your email below accurately reflects our efforts or the record,
and ignores that Plaintiff continues to refuse to provide us the information we have requested that would be
needed for us to even make any additional proposals. I will note also that the parties’ initial agreement, which
Plaintiff now seeks to abandon, was itself the result of a compromise Defendants made in connection with
Plaintiff’s previous threat of motion practice on this same issue.
David

From: Monterio, Charles [mailto:[e-mail]]
Sent: Monday, June 25, 2012 1:10 PM
To: David Perlson
Cc: QE-IP Engine; Noona, Stephen E.; zz-IPEngine; 'Donald C. Schultz'; W. Ryan Snow; [e-mail]
Subject: RE: Plaintiff's Response to Interrogatory No. 1

David,
1

Fact Discovery is over in September. During the 30(b)(6) depositions, several persons were identified who I/P
Engine may have to depose. Additionally, Google and the other defendants have produced thousands of pages
of documents over the past two weeks. It was never our intent to be limited to deposing only those persons that
Defendants identify for us. We have adjusted our numbers to further find another compromise. We note that
Google has failed to offer any compromise over the past two weeks. Please do so now or we will inform the
court in our motion, which we plan on filing within the next two hours.
Regarding Google’s revisions, again what Defendants request far exceeds the requirements under the Federal
Rules, the Court’s order, and distorts the facts. Certainly (and as they did during their respective depositions),
the inventors have described facts relating to their conception and reduction to practice of the patents in
suit. Defendants’ objections have consistently been that I/P Engine has not provided a date. Our proposed
revisions address that concern. We also note that in the transcript of the hearing with the Court first addressed
this issue, the Court made clear that I/P Engine was to answer as of the discovery at the time of the amendment.
The Court also clearly stated that the parties may see fit to amend/supplement their responses post
discovery. Defendants’ continued demand that Plaintiff be foreclosed at this point in the discovery process is
unsupported by the rules and the law. I/P Engine has provided the information that it currently has regarding
the conception and reduction to practice of the patents in suit.
From: David Perlson [mailto:[e-mail]]
Sent: Monday, June 25, 2012 2:59 PM
To: Monterio, Charles
Cc: QE-IP Engine; Noona, Stephen E.; zz-IPEngine; 'Donald C. Schultz'; W. Ryan Snow; [e-mail]
Subject: RE: Plaintiff's Response to Interrogatory No. 1

Charles, 

It seems that you have once again provided as a “compromise” what was essentially your prior position.  Can you 
explain how below is a compromise?  Also, Plaintiff still has not indicated what additional depositions it feels it still 
needs that require it to depart from the parties’ prior agreement regarding depositions. 

Regarding, interrogatory No. 1, we have added the underlined language below to your proposal based on what 
Interrogatory No. 1 seeks and also references the inventors which we presume were contacted in Plaintiff’s efforts to 
comply with the Court’s Order such that there should not be an issue with including this language:  

“I/P Engine’s present contention is that the constructive reduction to practice date is the effective date of the
‘420 patent, i.e., December 3, 1998 (based on the filing date of the patent application, U.S. Patent Application
No. 09/204,149, that issued as the ‘420 patent).
After a reasonable investigation of available information including a review of the documents identified in
Plaintiff’s First Supplemental Response to Interrogatory No. 1 and discussions with named inventors Andrew
K. Lang and Donald Kosak, Plaintiff is not aware of evidence sufficient to form a contention as to the
conception of, or any reduction to practice activities related to, the patents-in-suit prior to December 3, 1998,
and is unable to identify or describe any facts relating to conception and/or reduction to practice prior to the
filing of the patents-in-suit. 

From: Monterio, Charles [mailto:[e-mail]]
Sent: Monday, June 25, 2012 10:31 AM
To: David Perlson
Cc: QE-IP Engine; Noona, Stephen E.; zz-IPEngine; 'Donald C. Schultz'; W. Ryan Snow; [e-mail]
Subject: RE: Plaintiff's Response to Interrogatory No. 1
2

David,
We are equally working with Defendants to resolve the deposition count issue. In an effort to resolve this issue
without motion practice, we propose: I/P Engine be permitted to take (without having to seek leave of Court)
the following number of individual 30(b)(1) depositions from each Defendant: 3 from Google, 3 from AOL, 2
from IAC, 2 from Target, and 2 from Gannett. Please advise whether Defendants are willing to agree to this
proposal. As our brief on this issue is also due today, please respond as soon as possible.
In response to your email, we believe that the language of your proposal goes well beyond what is required by
the Federal Rules. Plaintiff needs to only provide its current contentions in response to the pending
interrogatory. In an effort to resolve this issue, we counter-propose the following language:

“I/P Engine’s present contention is that the constructive reduction to practice date is the effective date of the
‘420 patent, i.e., December 3, 1998 (based on the filing date of the patent application, U.S. Patent Application
No. 09/204,149, that issued as the ‘420 patent).

After a reasonable investigation of available information including a review of the documents identified in
Plaintiff’s First Supplemental Response to Interrogatory No. 1, Plaintiff is not aware of evidence sufficient to
form a contention as to the conception of, or any reduction to practice activities related to, the patents-in-suit
prior to December 3, 1998.”

Charles J. Monterio, Jr.
Associate
Dickstein Shapiro LLP
1825 Eye Street NW | Washington, DC 20006
Tel [phone]| Fax [phone]
[e-mail]

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From: David Perlson [mailto:[e-mail]]
Sent: Monday, June 25, 2012 12:28 PM
To: zz-IPEngine
Cc: QE-IP Engine; Noona, Stephen E.
Subject: Plaintiff's Response to Interrogatory No. 1
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Counsel, as you are aware, the Court instructed us to file a brief today regarding Plaintiff’s failure to comply
with the Court’s Order to provide a complete response to Interrogatory No. 1. In an effort to resolve this issue
without motion practice, we propose that Plaintiff provide the following in a verified supplemental response to
Interrogatory No. 1:
“Even after a thorough investigation including review of the documents identified in Plaintiff’s First
Supplemental Response to Interrogatory No. 1 and discussions with named inventors Andrew K. Lang and
Donald Kosak, Plaintiff, and Mr. Lang and Mr. Kosak, have no knowledge regarding the facts and
circumstances of the conception, development, or reduction to practice of the patents-in-suit before the filing
date of the ‘420 patent.”
Please advise whether Plaintiff is willing to supplement its response to Interrogatory No. 1 in this manner. As
our brief is due today, please respond as soon as possible.
David

David Perlson
Quinn Emanuel Urquhart & Sullivan, LLP
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