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

Filing 201

Memorandum in Support re 200 MOTION for Sanctions Motion for Discovery Sanctions Regarding Untimely Disclosed Prior Art 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 Proposed Order)(Sherwood, Jeffrey)

Exhibit 3 

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.

DEFENDANT GOOGLE INC.'S OBJECTIONS AND RESPONSES TO PLAINTIFF I/P
ENGINE, INC.'S FIRST SET OF INTERROGATORIES
Pursuant to Federal Rules of Civil Procedure 26 and 33, Defendant Google Inc. hereby
objects and responds in writing to I/P Engine, Inc.'s First Set of Interrogatories as served on
November 7, 2011.
GENERAL OBJECTIONS
Google makes the following general objections to each and every definition, instruction,
and interrogatory made in I/P Engine's First Interrogatories to Google. Each of these objections
is incorporated into the Specific Objections set forth below, whether or not separately set forth
therein. By responding to any of the interrogatories or failing to specifically refer to or specify
any particular General Objection in response to a particular interrogatory, Google does not waive
any of these General Objections, nor admit or concede the appropriateness of any purported
interrogatory or any assumptions contained therein.
1.

Nothing in these responses should be construed as waiving rights or objections

that might otherwise be available to Google nor should Google's responses to any of these

interrogatories be deemed an admission of relevancy, materiality, or admissibility in evidence of
the interrogatory or the response thereto.
2.

Google objects to each interrogatory to the extent that it seeks the disclosure of

information protected from disclosure by the attorney-client privilege, the attorney work product
doctrine or any other applicable privilege or protection as provided by law. Google will not
produce such privileged or protected information, and any inadvertent disclosure of any
privileged or protected information should not be deemed a waiver of any privilege.
3.

Google objects to each interrogatory, and to the definitions and instructions, to the

extent it purports to impose upon Google obligations broader than, or inconsistent with, the
Federal Rules of Civil Procedure or the Local Rules and Orders of this Court.
4.

Google objects to each interrogatory, and to the definitions and instructions, to the

extent that they are overbroad, vague and ambiguous, unduly burdensome and oppressive, in
purporting to require Google to search facilities and inquire of employees other than those
facilities and employees that could reasonably be expected to have responsive information, or
produce information outside a relevant time period or unrelated to the asserted claims of the
patent-in-suit. Google also will not produce information that is not in its possession, custody or
control.
5.

Google objects to each interrogatory to the extent it seeks information already in

I/P Engine's possession or equally available to I/P Engine from other sources that are more
convenient, less burdensome and/or less expensive.
6.

Google objects to each interrogatory and to the definitions and instructions

included therewith pursuant to Federal Rule of Civil Procedure 26(b)(2)(i) to the extent that it

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purports to require the disclosure of information that is more readily available and/or more
appropriately obtainable through other means of discovery.
7.

Google objects to each interrogatory to the extent that it is compound and/or is

comprised of subparts constituting more than one interrogatory, particularly in view of I/P
Engine's instructions with respect to each "subpart" of each interrogatory as each subpart
properly counts as separate interrogatories against the limit of interrogatories for I/P Engine in
this case.
8.

Google objects to each interrogatory, and to the definitions and instructions

included therewith, to the extent they seek proprietary, trade secret or other confidential or
competitively sensitive business information. Subject to Local Rule 26.2, Google will only
produce such relevant, non-privileged information subject to adequate protections for Google's
confidential, trade secret and/or proprietary business or technical information via a protective
order entered by the Court in this action.
9.

Google objects to each interrogatory, and to the definitions and instructions

included therewith, to the extent that it purports to require Google to disclose private or
personally-identifiable information of its users.
10.

Google objects to each interrogatory, and to the definitions and instructions

included therewith, to the extent that it purports to require Google to disclose information that is
subject to any protective order, privacy interest, contractual obligation, or other confidentiality
obligation owed to any third party.
11.

Google objects to each interrogatory to the extent that such interrogatory

prematurely seeks the production of information and documents in advance of the dates set by
the Federal Rules of Civil Procedure, the Local Rules, or any orders entered by this Court.

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12.

Google objects to each interrogatory as premature and unduly burdensome to the

extent that it seeks information likely to depend on construction of claim terms and/or expert
analysis of the patent-in-suit, the deadlines for which have not yet been set.
13.

Google objects to each interrogatory as premature and unduly burdensome to the

extent that it seeks discovery regarding non-infringement of any claim(s) of the patent-in-suit for
which I/P Engine has not provided a substantive contention that Google practices every element
of such claim(s).
14.

Google objects to each interrogatory as unduly burdensome to the extent it seeks

information about every version or release of purportedly accused technology or functionality.
The burden and expense associated with producing such information grossly outweighs its
benefit and relevance.
15.

Google objects to I/P Engine's definition of "Google" as overly broad and unduly

burdensome, to the extent that includes current and past offices, directors, agents, employees,
consultants, attorneys, and others acing on Google's behalf.
16.

Google objects to I/P Engine's definitions of the terms "Identify," "Describe," and

"Communication" as vague, overbroad, unduly burdensome, and oppressive.
17.

Google objects to I/P Engine's definitions of the term "Search Technology

incorporating User Feedback," as vague, overbroad, unduly burdensome, and oppressive. In
particular, it is not clear what "considering how well search results match the user's search
query" and "using data relating to other users' feedback to the search result" refer to. To the
extent it is meant to refer to the accused products as defined elsewhere in I/P Engine's requests,
Google objects on the ground that it cannot be expected to identify every "search system" any
part of which "utilize[es] a calculation, algorithm, value or score that uses, in some way, user

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feedback to determine search results" regardless of relevance. The burden and expense
associated with producing such information grossly outweighs its benefit and relevance.
19.

Google objects to I/P Engine's definitions of the term "Relevance Score," as

vague, overbroad, unduly burdensome, and oppressive. In particular, it is not clear what "any
variable, score, and/or value" and "systems utilizing a calculation, algorithm, value or score"
refer to. To the extent it is meant to refer to systems other than Google's AdWords system and
AdSense for Search system, Google objects on the ground that it cannot be expected to identify
every system of which any part of which meets I/P Value's broad defining factors, regardless of
relevance. The burden and expense associated with producing such information grossly
outweighs its benefit and relevance.
20.

Google objects to each interrogatory, definition, and instruction to the extent the

burden or expense of the proposed discovery outweighs its likely benefit, considering the needs
of the case, the amount in controversy, the importance of the issues at stake in the action, and the
importance of the discovery in resolving the issues.
21.

Google responds to these interrogatories based upon its current understanding and

reserves the right to supplement its responses if any additional information is identified at a later
time and to make any additional objections that may become apparent.
22.

Each of Google's responses to these interrogatories are made subject to and

without waiving, limiting, or intending to waive:
A.

each of the above-stated general objections and reservations;

B.

the right to object on the grounds of competency, privilege, relevancy, or

materiality, or any other proper grounds, to the use of the documents or information, for any

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purpose, in whole or in part, in any subsequent step or proceeding in this action or any other
action;
C.

the right to object on any and all grounds, at any time, to other discovery

requests involving or relating to the subject matter of the present litigation; and
D.

the right at any time to revise, correct, and add to or clarify any of the

responses herein.
23.

At any point, by responding to these interrogatories, Google does not waive or

intend to waive, but expressly reserves, all of its statements, reservations, and objections, both
general and specific, set forth in these responses, even though Google may in some instances
disclose information over the statements, reservations, and objections contained herein.
STATEMENT ON SUPPLEMENTATION
Google's investigation in this action is ongoing, and Google reserves the right to rely on
and introduce information in addition to any information provided herein at the trial of this
matter or in other related proceedings. Google has yet to receive complete discovery responses
from I/P Engine. In addition, I/P Engine has yet to identify in a coherent way how it contends
Google infringes the asserted claims of the Patents-in-Suit. Google anticipates that facts it learns
later in the litigation may be responsive to one or more of the interrogatories and Google reserves
is right to supplement these interrogatories at appropriate points throughout this litigation
without prejudice and/or to otherwise make available to I/P Engine such information. Google
also reserves the right to change, modify or enlarge the following responses based on additional
information, further analysis, and/or in light of events in the litigation such as rulings by the
Court. Google reserves the right to rely on or otherwise use any such amended response for
future discovery, trial or otherwise.

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SPECIFIC OBJECTIONS AND RESPONSES
Google expressly incorporates the above objections as though set forth fully in response
to each of the following individual interrogatories, and, to the extent that they are not raised in
the particular response, Google does not waive those objections.

INTERROGATORY NO. 1
Identify, using the specific model number, version number, edition number and/or release
number, as well as internal Google project name and corresponding software release(s), each
Search Technology incorporating User Feedback that from January 1, 2002 to the present was
used (commercially and/or tested), sold, or offered for sale in the United States, imported into the
United States and/or exported out of the United States, or that are intended for use in the United
States, by or on behalf of Google.

RESPONSE TO INTERROGATORY NO. 1:
Google incorporates here in response to this interrogatory its General Objections above
by this reference. Google objects to this interrogatory on the grounds that: (i) it is overbroad and
unduly burdensome, particularly to the extent that it seeks information from January 1, 2002 to
the present and to the extent that it is not confined to those products that are reasonably accused
in this case; (ii) it is vague and ambiguous with respect to the terms "the specific model number,
version number, edition number and/or release number," given what is accused in this case,
"Search Technology incorporating User Feedback," for the reasons set forth in the General
Objections above, "used," and "intended for use;" and (iii) it seeks information that is irrelevant,
immaterial or not reasonably calculated to lead to the discovery of admissible evidence. Google
further objects to this interrogatory on the ground that it seeks proprietary, trade secret or other

7

confidential or competitively sensitive business information. Google will only produce such
relevant, non-privileged information subject to adequate protections for Google's confidential,
trade secret and/or proprietary business or technical information via a protective order entered by
the Court in this action.
Subject to the foregoing general and specific objections, Google responds that Google
does not infringe any claim of the '420 or '664 Patents. Google further responds that as best
Google can understand this interrogatory, Google Search is not "Search Technology
incorporating User Feedback" as Plaintiff has defined that term. More specifically, Google
Search does not “us[e] data relating to other users’ feedback to the search result” in computing
search results. Furthermore, the “other users’ feedback” system described in the ‘420 and ‘664
patents is a collaborative filtering system. Google Search does not incorporate collaborative
filtering, and Plaintiff has not contended otherwise.
Google reserves its right to supplement, revise or render more specific its responses to
Interrogatory No. 1, including during expert discovery.

INTERROGATORY NO. 2
Identify, using the specific model number, version number, edition number and/or release
number, as well as internal Google project name and corresponding software release(s), each
Google system using a Relevance Score that from January 1, 2002 to the present was used
(commercially and/or tested), sold, or offered for sale in the United States, imported into the
United States and/or exported out of the United States, or that are intended for use in the United
States, by or on behalf of Google.

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RESPONSE TO INTERROGATORY NO. 2:
Google incorporates here in response to this interrogatory its General Objections above
by this reference. Google objects to this interrogatory on the grounds that: (i) it is compound,
overbroad and unduly burdensome, particularly to the extent that it seeks information from
January 1, 2002 to the present and to the extent that it is not confined to those products that are
reasonably accused in this case; (ii) it is vague and ambiguous with respect to the terms
"Relevance Score," for the reasons set forth in the General Objections above, "used," and
"intended for use;" and (iii) it seeks information that is irrelevant, immaterial or not reasonably
calculated to lead to the discovery of admissible evidence. Google further objects to this
interrogatory on the ground that it seeks proprietary, trade secret or other confidential or
competitively sensitive business information. Google will only produce such relevant, nonprivileged information subject to adequate protections for Google's confidential, trade secret
and/or proprietary business or technical information via a protective order entered by the Court
in this action.
Subject to the foregoing general and specific objections, Google responds that Google
does not infringe any claim of the '420 or '664 Patents. Google further responds that as best
Google can understand this interrogatory, Google AdWords does not use a "Relevance Score," as
Plaintiff has defined that term. More specifically, Google AdWords does not use “the relevance
of the content of the search results to the user search query including, but not limited to, the
landing page or the advertisement text to the user search” in computing which advertisements are
to be displayed; AdWords compares the search query to the keywords selected by the advertiser.
Those keywords are not part of “the content of the search results. Furthermore, the incorporation
of “users’ responses to the search result” described in the ‘420 and ‘664 patents is through a

9

collaborative filtering system. Google AdWords does not incorporate collaborative filtering, and
Plaintiff has not contended otherwise.
Google reserves its right to supplement, revise or render more specific its responses to
Interrogatory No. 2, including during expert discovery.

INTERROGATORY NO. 3
Identify all representatives of Google or other persons or entities on behalf of Google
who have actively marketed or sold, or are currently actively marketing or selling, the use of
each Google system identified in response to Plaintiff's Interrogatory No. 2.

RESPONSE TO INTERROGATORY NO. 3:
Google incorporates here in response to this interrogatory its General Objections above
by this reference. Google objects to this interrogatory on the grounds that: (i) it is overbroad and
unduly burdensome, particularly to the extent that it seeks information from January 1, 2002 to
the present, to the extent that it is not confined to those products that are reasonably accused in
this case, and to the extent that it is not confined to a reasonable number or category of
individuals; (ii) it is vague and ambiguous with respect to the terms "other persons or entities on
behalf of Google;" and (iii) it seeks information that is irrelevant, immaterial or not reasonably
calculated to lead to the discovery of admissible evidence.
Subject to the foregoing general and specific objections, because no Google product uses
a "Relevance Score," as Plaintiff has defined that term, no representatives of Google or other
persons or entities on behalf of Google have marketed or sold a Google product “using a
Relevance Score” as Plaintiff has defined that term. Google reserves its right to supplement,

10

revise or render more specific its responses to Interrogatory No. 3, including during expert
discovery.

INTERROGATORY NO. 4
For each Google system identified in response to Plaintiff's Interrogatory No. 2, describe
Google's corporate policy regarding indemnification, its rights and obligations under
indemnification, its corporate policy regarding obtaining insurance for patent infringement, and
its rights and obligations under any obtained insurance agreement regarding patent infringement.

RESPONSE TO INTERROGATORY NO. 4:
Google incorporates here in response to this interrogatory its General Objections above
by this reference. Google objects to this interrogatory on the grounds that: (i) it is overbroad and
unduly burdensome, particularly to the extent that it seeks information from January 1, 2002 to
the present and to the extent that it is not confined to those products that are reasonably accused
in this case; (ii) it is vague and ambiguous with respect to the term "corporate policy" and (iii) it
seeks information that is irrelevant, immaterial or not reasonably calculated to lead to the
discovery of admissible evidence. Google further objects to this interrogatory on the ground that
it seeks proprietary, trade secret or other confidential or competitively sensitive business
information. Google will only produce such relevant, non-privileged information subject to
adequate protections for Google's confidential, trade secret and/or proprietary business or
technical information via a protective order entered by the Court in this action.
Subject to the foregoing general and specific objections, Google responds that because no
Google product uses a "Relevance Score," as Plaintiff has defined that term, Google has no
policies or agreements regarding any such products.

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Google reserves its right to supplement, revise or render more specific its responses to
Interrogatory No. 4, including during expert discovery.

INTERROGATORY NO. 5
For each Google system identified in response to Plaintiff's Interrogatory No. 2, describe
the algorithm or algorithms used to determine which advertisements are displayed in response to
a user query including, but not limited to, the calculation, algorithm, value or score of "Quality
Score."

RESPONSE TO INTERROGATORY NO. 5:
Google incorporates here in response to this interrogatory its General Objections above
by this reference. Google objects to this interrogatory on the grounds that: (i) it is overbroad and
unduly burdensome, particularly to the extent that it seeks information from January 1, 2002 to
the present and to the extent that it is not confined to those products that are reasonably accused
in this case; (ii) it is vague and ambiguous; and (iii) it seeks information that is irrelevant,
immaterial or not reasonably calculated to lead to the discovery of admissible evidence. Google
further objects to this interrogatory on the ground that it seeks proprietary, trade secret or other
confidential or competitively sensitive business information. Google will only produce such
relevant, non-privileged information subject to adequate protections for Google's confidential,
trade secret and/or proprietary business or technical information via a protective order entered by
the Court in this action.
Subject to the foregoing general and specific objections, because no Google product uses
a "Relevance Score," as Plaintiff has defined that term, Google has no algorithm as described in
this Interrogatory.

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Google does use what is referred to externally as "Quality Scores" in AdWords, but no
Quality Score is a "Relevance Score," as Plaintiff has defined that term.
Google reserves its right to supplement, revise or render more specific its responses to
Interrogatory No. 5, including during expert discovery.

INTERROGATORY NO. 6
Identify and describe each basis for Google's contention that it is not a direct infringer
including, but not limited to, all facts, documents, communications and/or events which Google
contends are pertinent thereto, and identify the persons having the most knowledge of such facts,
documents, communications and/or events.

RESPONSE TO INTERROGATORY NO. 6:
Google incorporates here in response to this interrogatory its General Objections above
by this reference. Google objects to this interrogatory on the grounds that: (i) it is overbroad and
unduly burdensome, particularly to the extent that it is not confined to those products that are
reasonably accused in this case; (ii) it is vague and ambiguous with respect to the phrase "all
facts, documents, communications and/or events;" and (iii) it seeks information that is irrelevant,
immaterial or not reasonably calculated to lead to the discovery of admissible evidence. Google
further objects to this interrogatory on the ground that it seeks proprietary, trade secret or other
confidential or competitively sensitive business information. Google will only produce such
relevant, non-privileged information subject to adequate protections for Google's confidential,
trade secret and/or proprietary business or technical information via a protective order entered by
the Court in this action.

13

Subject to the foregoing general and specific objections, Google responds that Google
does not infringe any claim of the '420 or '664 Patents. Google further responds that in
accordance with Federal Rule of Civil Procedure 33(d), all or part of the non-objectionable
discovery sought may be obtained from documents that will be produced. Google will rely on
documents produced in this action that identify how the accused functions operate and will
identify those documents to the extent reasonable after the time they are produced. Google will
supplement its response to Interrogatory No. 6 to reference relevant documents to the extent
reasonable.
Google further responds that the accused products do not meet at least the following
limitations in the asserted claims:
‘420 Patent, Claim 10:
•

"a system for scanning a network to make a demand search for informons relevant
to a query from an individual user"

•

"a content-based filter system for receiving the informons from the scanning
system and for filtering the informons on the basis of applicable content profile
data for relevance to the query"

•

"a feedback system for receiving collaborative feedback data from system users
relative to informons considered by such users"

•

"the filter system combining pertaining feedback data from the feedback system
with the content profile data in filtering each informon for relevance to the query"

‘420 Patent, Claim 14:
•

"The system of claim 10 wherein the collaborative feedback data comprises
passive feedback data"

‘420 Patent, Claim 15:
•

"The system of claim 14 wherein the passive feedback data is obtained by
passively monitoring the actual response to a proposed informon."

14

‘420 Patent, Claim 25:
•

"scanning a network to make a demand search for informons relevant to a query
from an individual user"

•

"receiving the informons in a content-based filter system from the scanning
system and filtering the informons on the basis of applicable content profile data
for relevance to the query"

•

"receiving collaborative feedback data from system users relative to informons
considered by such users"

•

"combining pertaining feedback data with the content profile data in filtering each
informon for relevance to the query"

‘420 Patent, Claim 27:
•

"The method of claim 25 wherein the collaborative feedback data provides
passive feedback data"

‘420 Patent, Claim 28:
•

"The method of claim 27 wherein the passive feedback data is obtained by
passively monitoring the actual response to a proposed informon"

‘664 Patent, Claim 1:
•

"a scanning system for searching for information relevant to a query associated
with a first user in a plurality of users"

•

"a feedback system for receiving information found to be relevant to the query by
other users"

•

"a content-based filter system for combining the information from the feedback
system with the information from the scanning system and for filtering the
combined information for relevance to at least one of the query and the first user"

‘664 Patent, Claim 5:
•

"The search system of claim 1 wherein the filtered information is an
advertisement"

‘664 Patent, Claim 6:
•

"The search system of claim 1 further comprising an information delivery system
for delivering the filtered information to the first user"

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‘664 Patent, Claim 21:
•

"The search system of claim 1 wherein the content-based filter system filters the
combined information relevant to both the query and the first user"

‘664 Patent, Claim 22:
•

"The search system of claim 1 wherein the content-based filter system filters by
extracting features from the information"

‘664 Patent, Claim 26:
•

"searching for information relevant to a query associated with a first user in a
plurality of users"

•

"receiving information found to be relevant to the query by other users"

•

"combining the information found to be relevant to the query by other users with
the searched information"

•

"content-based filtering the combined information for relevance to at least one of
the query and the first user"

‘664 Patent, Claim 28:
•

"The method of claim 26 further comprising the step of delivering the filtered
information to the first user"

‘664 Patent, Claim 38:
•

"The method of claim 26 wherein the searching step comprises scanning a
network in response to a demand search for the information relevant to the query
associated with the first user"

Google reserves its right to supplement, revise or render more specific its responses to
Interrogatory No. 6 as its investigation continues, including during expert discovery.

INTERROGATORY NO. 7
Identify and describe each basis for Google's contention that it is not an indirect infringer,
including its contention that it is not liable for infringement by inducement and that it is not a
contributory infringer including, but not limited to, all facts, documents, communications and/or

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events which Google contends are pertinent thereto, and identify the persons having the most
knowledge of such facts, documents, communications and/or events.

RESPONSE TO INTERROGATORY NO. 7:
Google incorporates here in response to this interrogatory its General Objections above
by this reference. Google objects to this interrogatory on the grounds that: (i) it is overbroad and
unduly burdensome, particularly to the extent that it is not confined to those products that are
reasonably accused in this case; (ii) it is vague and ambiguous with respect to the phrase "all
facts, documents, communications and/or events;" and (iii) it seeks information that is irrelevant,
immaterial or not reasonably calculated to lead to the discovery of admissible evidence. Google
further objects to this interrogatory on the ground that it seeks proprietary, trade secret or other
confidential or competitively sensitive business information. Google will only produce such
relevant, non-privileged information subject to adequate protections for Google's confidential,
trade secret and/or proprietary business or technical information via a protective order entered by
the Court in this action.
Subject to the foregoing general and specific objections, Google responds that Google
does not directly infringe any claim of the '420 or '664 Patents and, accordingly, cannot
indirectly infringe any claim of the '420 or '664 Patents. Google further responds that in
accordance with Federal Rule of Civil Procedure 33(d), all or part of the non-objectionable
discovery sought may be obtained from documents that will be produced. Google will rely on
documents produced in this action that identify how the accused functions operate and will
identify those documents to the extent reasonable after the time they are produced. Google will
supplement its response to Interrogatory No. 7 to reference relevant documents to the extent
reasonable.
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Further, Plaintiff has not provided substantive contentions regarding indirect infringement
beyond stating:
•

Google, via its marketing materials and other publicly available sources, provides,
sells, offers for sale, and/or promotes the infringing products, methods and
systems of Google AdWords to its members of the Google Search Network,
advertisers and/or end users that use the infringing Google AdWords….Based on
these marketing materials and uses, Google intends for its members of the Google
Search Network, advertisers and/or end users to use Google AdWords in an
infringing manner. Thus, Google intends to cause infringement of the ‘420 and
‘664 patents. By making, using, providing, selling, and/or promoting its
infringing Google AdWords, and by continuing to provide, sell, offer for sale,
and/or promote its infringing Google AdWords, with the intention of causing at
least some members of the Google Search Network, advertisers and/or end users
to use Google AdWords in an infringing manner, Google actively and knowingly
aids and abets infringement of the ‘420 and ‘664 patents and is liable under
induced infringement. In addition, Google AdWords is a material part of the
claimed invention of the ‘420 and ‘664 patents. Google AdWords is especially
made or especially adapted for use with only infringing search engine systems
and/or search systems. Furthermore, Google AdWords is not a staple article.
Google AdWords is not a commodity of commerce and can only be used with
infringing search engine systems and/or search systems. Google AdWords is also
not suitable for substantial non-infringing uses. Therefore, Google is liable as a
contributory infringer.

•

Google, via its materials and other publicly available sources, provides, sells, offers
for sale, and/or promotes the infringing products, methods and systems of Google
Search to its Search Partners and/or end users that use the infringing Google
Search….Based on these materials and uses, Google intends for its Search Partners
and/or end users to use Google Search in an infringing manner. Thus, Google
intends to cause infringement of the ‘420 and ‘664 patents. Therefore, by making,
using, providing, selling, and/or promoting its infringing Google Search, and by
continuing to provide, sell, offer for sale, and/or promote its infringing Google
Search, with the intention of causing at least some Search Partners and/or end users
to use Google Search in an infringing manner, Google actively and knowingly aids
and abets infringement of the ‘420 and ‘664 patents and is liable under induced
infringement. In addition, Google Search is a material part of the claimed invention
of the ‘420 and ‘664 patents. Google Search is especially made or especially
adapted for use with only infringing search engine systems and/or search systems.
Furthermore, Google Search is not a staple article. Google Search is not a
commodity of commerce and can only be used with infringing search engine
systems and/or search systems. Google Search is also not suitable for substantial
non-infringing uses. Therefore, Google is liable as a contributory infringer.

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Plaintiff has not shown how it contends that Google encouraged direct infringement by any third
party, had the specific intent to encourage such infringement, or had knowledge of any such
infringement. Plaintiff also has failed to provide specific allegations detailing how it contends that
Google sold or offered to sell its products with the intention of causing third parties to use such
products in an infringing manner. Plaintiff has failed to provide specific allegations detailing how
it contends that Google induced infringement or specific allegations that Google had knowledge
that any alleged induced acts constituted patent infringement. Furthermore, Plaintiff asserts that
“Google AdWords is also not suitable for substantial non-infringing uses,” but provides no
evidence or analysis in support. Again, Google cannot rebut allegations that have not been made.
Google reserves its right to supplement, revise or render more specific its responses to
Interrogatory No. 7 as its investigation continues, including during expert discovery

INTERROGATORY NO. 8
Identify and describe each basis for Google's contention that the claims of the '420 and
'664 Patents are invalid including, but not limited to, all facts, dates, documents, communications
and/or events, including prior art, which Google contends are pertinent thereto, and identify the
persons having the most knowledge of such facts, dates, documents, communications and/or
events.

RESPONSE TO INTERROGATORY NO. 8:
Google incorporates here in response to this interrogatory its General Objections above
by this reference. Google objects to this interrogatory on the grounds that: (i) it is overbroad and
unduly burdensome; (ii) it is vague and ambiguous with respect to the phrase "all facts, dates,
documents, communications and/or events;" (iii) it seeks information that is irrelevant,

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immaterial or not reasonably calculated to lead to the discovery of admissible evidence. Google
further objects to this interrogatory on the ground that it seeks proprietary, trade secret or other
confidential or competitively sensitive business information; and (iv) it is compound and/or is
comprised of subparts constituting more than one interrogatory in that it seeks information about
'420 and '664 Patents. Google will only produce such relevant, non-privileged information
subject to adequate protections for Google's confidential, trade secret and/or proprietary business
or technical information via a protective order entered by the Court in this action.
Subject to the foregoing general and specific objections, Google responds that in
accordance with Federal Rule of Civil Procedure 33(d), all or part of the non-objectionable
discovery sought may be obtained from documents that will be produced. Google will rely on
documents produced in this action and will identify those documents to the extent reasonable
after the time they are produced. Google will supplement its response to Interrogatory No. 8 to
reference relevant documents to the extent reasonable.
Google further responds that the following references, either alone or in conjunction with
the knowledge of one of skill in the art, render one or more of the asserted claims invalid:
•

"Content-Based, Collaborative Recommendation" by Balabanovic et al.

•

"Feature-based and Clique-based User Models for Movie Selection: A
Comparative Study" by Alspector et al.

•

"Using Collaborative Filtering to Weave an Information Tapestry" by Goldberg et
al.

•

“Architecting Personalized Delivery of Multimedia Information” by Loeb

•

U.S. Patent No. 5,794,237 to Gore

•

U.S. Patent No. 5,835,087 to Herz

•

U.S. Patent No. 5,855,015 to Shoham

•

U.S. Patent No. 6,202,058 to Rose

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•

U.S. Patent No. 5,724,567 to Rose et al.

•

U.S. Patent No. 6,006,218 to Breese et al.

•

U.S. Patent No. 6,421,675 to Ryan et al.

•

U.S. Patent No. 5,963,940 to Liddy et al.

Google further asserts that the asserted claims of the ‘420 and ‘664 patent, as apparently
interpreted by Plaintiff, are invalid for lack of enablement and written description. In particular,
neither patent describes or enables using collaborative filtering or any other form of feedback on
a demand search. Rather, the patents only describe and enable using collaborative filtering with
persistent or “wire” search results.
Google reserves its right to supplement, revise or render more specific its responses to
Interrogatory No. 8, including during expert discovery.

INTERROGATORY NO. 9
Identify any system, and when it was developed, that Google intends to rely upon in this
litigation as a non-infringing alternative to each Google system identified in response to
Interrogatory No. 2 including, but not limited to, all facts, documents, communications and/or
events which Google contends are pertinent thereto, and identify the persons having the most
knowledge of such facts, documents, communications and/or events.

RESPONSE TO INTERROGATORY NO. 9:
Google incorporates here in response to this interrogatory its General Objections above
by this reference. Google objects to this interrogatory on the grounds that: (i) it is overbroad and
unduly burdensome, particularly to the extent that it seeks information from January 1, 2002 to
the present and to the extent that it is not confined to those products that are reasonably accused

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in this case; (ii) it is vague and ambiguous with respect to the phrase "all facts, documents,
communications and/or events;" (iii) it is compound and/or is comprised of subparts constituting
more than one interrogatory; (iv) it seeks information that is irrelevant, immaterial or not
reasonably calculated to lead to the discovery of admissible evidence; and (v) it is premature in
given the vague nature of I/P Engine's infringement contentions to date. Google further objects
to this interrogatory on the ground that it seeks proprietary, trade secret or other confidential or
competitively sensitive business information. Google will only produce such relevant, nonprivileged information subject to adequate protections for Google's confidential, trade secret
and/or proprietary business or technical information via a protective order entered by the Court
in this action.
Subject to the foregoing general and specific objections, Google responds that Google
does not infringe any claim of the '420 or '664 Patents. Google further responds that in
accordance with Federal Rule of Civil Procedure 33(d), all or part of the non-objectionable
discovery sought may be obtained from documents that will be produced. Google reserves the
right to supplement this interrogatory as its investigation continues, including after Plaintiff sets
forth its allegations of infringement and identifies the claims of the '420 and '664 Patents that it
intends to assert.
Google reserves its right to supplement, revise or render more specific its responses to
Interrogatory No. 9, including during expert discovery.

INTERROGATORY NO. 10
Identify when and under what circumstances Google first became aware of the existence
of the '420 or '664 Patents, and describe what action was taken by Google, including describing
any subsequent reviews, studies, analyses or examinations of the '420 or '664 Patents, their
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