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 5 

Case 2:11-cv-00512-RAJ-FBS Document 191-2

Filed 07/13/12 Page 2 of 4 PageID# 3362

quinn emanuel trial lawyers | san francisco
50 California Street, 22nd Floor, San Francisco, California 94111-4788 | TEL: [phone] FAX: [phone]

WRITER'S DIRECT DIAL NO.
[phone]
WRITER'S INTERNET ADDRESS
[e-mail]

February 13, 2012

Charles Monterio Jr.
Dickstein Shapiro LLP
1825 Eye Street NW
Washington, DC 20006
Re:

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

Dear Charles:
I am writing in regards to your February 9, 2012 letter concerning outstanding discovery
obligations and your February 9, 2012 letter concerning Google’s response to Interrogatory No.
6.
I.

Outstanding Discovery Issues

First, Google did not, and has never stated, that its technical production came from a “repository
pre-prepared for litigation purposes.” In fact, the 217,614 pages of technical documents
produced on December 7, 2011 were pulled from Google’s internal technical document
repository, a collection of technical wikis prepared by and used by Google’s engineers. This pull
was done specifically in relation to this litigation. We have not just produced documents from
prior litigations at Plaintiff’s specific request.
Your other statements regarding our production are also incorrect. Despite your suggestion to
the contrary. Google has produced all deposition transcripts from relevant prior AdWords cases
from current and former Google employees regarding aspects of the technology similar to those
accused in this case despite Plaintiff’s failure to agree to Google’s proposal regarding documents
from prior litigations. Also on January 25, 2012, Google produced its revenue data. Please
quinn emanuel urquhart & sullivan, llp
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Case 2:11-cv-00512-RAJ-FBS Document 191-2

Filed 07/13/12 Page 3 of 4 PageID# 3363

explain why you believe you do not possess Google’s revenue data when it has been produced.
We have been extremely proactive in moving discovery forward at an expedited pace and
producing a large volume of documents early in this case. Indeed, had Google not engaged in
good faith, early discovery, it would not have been obligated to produce any documents or
otherwise respond to discovery requests until March 9, 2012. Your repeated claim of concern
over the allegedly “slow pace of production” needs to stop and does nothing to advance the ball.
In addition, as we have said before, it is unclear what you mean by all “pending productions.”
We cannot give you concrete dates for productions when we do not understand to which
productions you are referring. Your repeated complaints about Google’s allegedly slow pace of
production are particularly unfounded when Plaintiff does not bother to timely download the
documents Google does produce. Although Google produced all of the prior art it has identified
on December 16, 2011. Almost two months later, on February 6, 2012, your team informed us
that the production had never been downloaded and asked that it be made available for download
once again.
As addressed under separate cover, Google continues working diligently to identify appropriate
custodians and search terms in order to provide Plaintiff with a thorough custodial document
production.
We also note that I/P Engine has refused to produce relevant documents concerning the
conception and reduction to practice of the patents-in-suit, attempts to license the patents, and
general financial information about itself, its predecessors, and its investors by hiding behind
weak assertions that certain people and entities are third parties. As discussed in greater detail in
Ms. Kammerud’s February 8, 2012 letter, based on I/P Engine’s privilege log, I/P Engine seems
to possess large numbers of documents from alleged third parties like Smart Search Labs, Inc.,
Hudson Bay Capital Management LP, Hudson Bay Master Fund, Ltd., Labrador Search
Corporation, and Lycos, Inc. In certain instances, you assert that these are wholly separate
entities that must be separately subpoenaed for documents, but in the others, I/P Engine admits to
possessing the documents and claims privilege protections over them. This is only one example
of the gamesmanship in which Plaintiff has engaged during this discovery process.
Further, we note that neither Lycos nor I/P Engine has produced any documents from Mr. Kosak
despite Google’s outstanding subpoenas to Lycos and Mr. Kosak and its requests for production
to I/P Engine. Mr. Brothers’ February 1, 2012 email states that you “have been coordinating
with Lycos regarding the production of those documents, which contain Lycos confidential
information, and recently received Lycos's permission to produce them to Defendants.” Despite
his assurance that you expected to make them available to Defendants “soon,” we still have not
received any of these documents.
Finally, we are still awaiting a response to Ms. Kammerud’s February 8, 2012 letter concerning
attempts to license the patents-in-suit and licenses of the patents.

2

Case 2:11-cv-00512-RAJ-FBS Document 191-2

II.

Filed 07/13/12 Page 4 of 4 PageID# 3364

Google’s Response to Interrogatory No. 6

It is unclear precisely what additional information you are seeking in response to Interrogatory
No. 6. In its response to Interrogatory No. 6, Google lists the elements of the patents-in-suit that
its systems do not meet. Once I/P Engine supplements its interrogatory responses to clarify
precisely what aspects of Google’s systems it is accusing of infringement, Google will
supplement its response to Interrogatory No. 6 as necessary. Further, we do not understand what
evidence Google could provide to demonstrate that the accused systems do not engage in
collaborative filtering. There simply is no evidence of that sort because the accused products do
not use collaborative filtering. To the extent that Plaintiff’s complaint stems from fact that it
believes the claims do not require collaborative filtering please clarify that this is Plaintiff’s
position.
In addition, your complaints about Google’s response to Interrogatory No. 6, a response that
contains a great deal of specificity, ring hollow in light of the fact that I/P Engine has not
provided any substantive response to the majority of Google’s Interrogatories, including numbers
1-4, 6, 10 and 11. In response to Interrogatory Nos. 1, 2, 6, 10, and 11, I/P Engine stated that it
intended to rely on produced documents to response, but as we first noted in our December 13,
2011 letter, it does not appear I/P Engine has produced documents responsive to these
Interrogatories. Also, with respect to Interrogatory No. 10, we do not believe that documents
alone would identify the ways that Plaintiff believes its invention improved on the prior art in a
non-obvious and unpredictable way. Further, in response to Interrogatory No. 7 I/P Engine
simply incorporated its Preliminary Disclosures of Asserted Claims and Pre-Discovery
Infringement Contentions as to Google, Inc. on November 7, 2011 despite the fact that I/P
Engine has possessed Google’s technical production since December and, thus, should be able to
supplement its infringement contentions.
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.
Very truly yours,

David A. Perlson

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