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

Filing 211

Declaration re 210 Brief in Support of Jen Ghaussy in Support of Motion to Compel Plaintiff to Produce Documents 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)(Noona, Stephen)

EXHIBIT F

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF VIRGINIA
I/P ENGINE, INC.,
Plaintiff,

No. 2:11-cv-00512-RAJ-FBS

v.

Jury Trial Demanded

AOL, INC., GOOGLE, INC., IAC SEARCH &
MEDIA, INC., GANNETT COMPANY, INC.,
and TARGET CORPORATION,
Defendants.

DEFENDANT GOOGLE INC.’S FIRST SET OF REQUESTS FOR PRODUCTION OF
DOCUMENTS TO PLAINTIFF I/P ENGINE, INC.
Pursuant to Rules 26 and 34 of the Federal Rules of Civil Procedure, Defendant Google
Inc. (“Google”) requests that Plaintiff I/P Engine, Inc. (“I/P Engine”) serve written responses to
the following Requests and produce the requested documents within thirty (30) days after the
service hereof. Google requests that I/P Engine permit the inspection and copying of the
following documents and other tangible items that are in I/P Engine’s possession, custody, or
control. These Requests are continuing in nature and require supplemental production in
accordance with the Federal Rules of Civil Procedure.
DEFINITIONS
1.

“I/P ENGINE,” “YOU,” “YOUR,” and “PLAINTIFF” mean I/P Engine, Inc. and

its officers, directors, current and former employees, counsel, agents, consultants,
representatives, and any other persons acting on behalf of any of the foregoing, and I/P Engine,
Inc.’s affiliates, parents, divisions, joint ventures, assigns, predecessors and successors in
interest, and any other legal entities, whether foreign or domestic, that are owned or controlled
by I/P Engine, Inc., and all predecessors and successors in interest to such entities or to the ‘420
PATENT or the ‘664 PATENT.

2.

“’420 PATENT” means U.S. Patent No. 6,314,420, entitled

“Collaborative/Adaptive Search Engine,” all underlying patent applications, all continuations,
continuations-in-part, divisionals, reissues, and any other patent applications in the ’420
PATENT family.
3.

“’664 PATENT” means U.S. Patent No. 6,775,664, entitled “Information Filter

System and Method for Integrated Content-Based and Collaborative/Adaptive Feedback
Queries,” all underlying patent applications, all continuations, continuations-in-part, divisionals,
reissues, and any other patent applications in the ’664 PATENT family.
4.

“PATENTS-IN-SUIT” shall refer to the ‘420 PATENT and the ‘664 PATENT,

individually and collectively.
5.

“DOCUMENT” shall mean all materials and information that are discoverable

pursuant to Rule 34 of the Federal Rules of Civil Procedure. A draft or non-identical copy is a
separate document within the meaning of this term.
6.

“PREDECESSORS IN INTEREST” shall mean any person or entity with an

ownership or other interest in the PATENTS-IN-SUIT prior to the assignment of the PATENTSIN-SUIT to PLAINTIFF, including but not limited to Lycos, Inc.
7.

“Google” means Defendant Google, Inc.

8.

“DEFENDANTS” means AOL, Inc., Google, Inc., IAC Search & Media, Inc.,

Gannett Company, Inc., and Target Corporation.
9.

The term “PERSON” shall refer to any individual, corporation, proprietorship,

association, joint venture, company, partnership or other business or legal entity, including
governmental bodies and agencies.
10.

“INFRINGE” and “INFRINGEMENT” means direct infringement, contributory

infringement, infringement by inducement, literal infringement, and infringement by the doctrine
of equivalents.

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11.

“PRIOR ART” shall mean the subject matter described in 35 U.S.C. §§ 102 and

103, including but not limited to publications, patents, physical devices, prototypes, uses, sales,
and offers for sale, and any DOCUMENTS evidencing any of the foregoing.
12.

“REFLECT,” “REFLECTING,” “RELATE TO,” “REFER TO,” “RELATING

TO,” and “REFERRING TO” shall mean relating to, referring to, concerning, mentioning,
reflecting, pertaining to, evidencing, involving, describing, discussing, commenting on,
embodying, responding to, supporting, contradicting, or constituting (in whole or in part), as the
context makes appropriate.
13.

“Include” and “including” shall mean including without limitation.

14.

Use of the singular also includes the plural and vice-versa.

15.

The words “or” and “and” shall be read in the conjunctive and in the disjunctive

wherever they appear, and neither of these words shall be interpreted to limit the scope of these
Interrogatories.
16.

The use of a verb in any tense shall be construed as the use of the verb in all other

17.

SUBJECT MATTER IN SUIT means Information Retrieval technology that uses

tenses.

filters based on content and collaborative or social filtering to identify information to present to a
user.
INSTRUCTIONS
The following instructions shall apply to each of the Document Requests herein:
1.

In answering the following Document Requests, furnish all available information

in your possession, custody, or control. If you cannot fully respond to the following Document
Requests after exercising due diligence to secure the information requested thereby, so state, and
specify the portion of each Document Request that cannot be responded to fully and completely.
In the latter event, state what knowledge, information or belief Plaintiff has concerning the
unanswered portion of any such Document Requests.

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2.

Electronic records and computerized information must be produced in an

intelligible format, together with a description of the system from which they were derived
sufficient to permit rendering the records and information intelligible.
3.

Selection of documents from the files and other sources and the numbering of

such documents shall be performed in such a manner as to ensure that the source of each
document may be determined, if necessary.
4.

File folders with tabs or labels or directories of files identifying documents must

be produced intact with such documents.
5.

Documents attached to each other shall not be separated.

6.

If any information requested is claimed to be privileged or otherwise, please

provide all information falling within the scope of the Document Request which is not
privileged, and for each item of information contained in a document to which a claim of
privilege is made, identify such document with sufficient particularity for purposes of a motion
to compel, such identification to include at least the following:
(a)

the basis on which the privilege is claimed;

(b)

the names and positions of the author of the document and all other

persons participating in the preparation of the document;
(c)

the name and position of each individual or other person to whom the

document, or a copy thereof, was sent or otherwise disclosed;
(d)

the date of the document;

(e)

a description of any accompanying material transmitted with or attached to

such document;
(f)

the number of pages in such document; and

(g)

whether any business or non-legal matter is contained or discussed in such

document.
7.

If Plaintiff’s response to a particular Document Request is a statement that

Plaintiff lacks the ability to comply with that Document Request, Plaintiff must specify whether

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the inability to comply is because the particular item or category of information never existed,
has been destroyed, has been lost, misplaced, or stolen, or has never been, or is no longer, in
Plaintiff’s possession, custody, or control, in which case the name and address of any person or
entity known or believed by you to have possession, custody, or control of that information or
category of information must be identified.
8.

Plaintiff’s obligation to respond to these Document Requests is continuing and its

responses are to be supplemented to include subsequently acquired information in accordance
with the requirements of Rule 26(e) of the Federal Rules of Civil Procedure.
DOCUMENTS TO BE PRODUCED

REQUEST FOR PRODUCTION NO. 1:
All DOCUMENTS and communications that REFLECT, REFER TO or RELATE TO
the PATENTS-IN-SUIT, including any foreign counterparts to the PATENTS-IN-SUIT.

REQUEST FOR PRODUCTION NO. 2:
All DOCUMENTS that REFLECT, REFER TO or RELATE TO efforts to obtain patent
protection on any invention related to the subject matter shown, described, or claimed in the
PATENTS-IN-SUIT, including but not limited to:
a) any invention disclosures;
b) any DOCUMENT attached to, REFERRING TO or REGARDING any
invention disclosure;
c) drafts of patent applications;
d) the prosecution history of each application that claims priority to the
PATENTS-IN-SUIT or the application which lead to the PATENTS-INSUIT;

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e) the prosecution history of each application on which Andrew K. Lang or
Donald M. Kosak is a named inventor, including all issued, pending or
abandoned applications;
f) the prosecution history of each application that is directed to the subjectmatter disclosed in the PATENTS-IN-SUIT assigned to I/P ENGINE or in
which I/P ENGINE has or expects to have an interest, including all issued,
pending, abandoned applications;
g) all correspondence regarding the patent applications referred to in subparts (c)
through (f) above;
i) all DOCUMENTS consulted or reviewed by the applicants, patentees, or
prosecuting attorneys during the preparation and prosecution of any
application referred to in subparts (c) through (f) above, including but not
limited to PRIOR ART references or potential PRIOR ART references; and
j) ALL U.S. and foreign patents and patent applications, including unpublished
applications, that are owned, in whole or in part, or licensed by or to I/P
ENGINE, that are directed to the subject-matter disclosed in the PATENTSIN-SUIT, including without limitation all continuations, continuations-in-part,
divisionals, parents and foreign counterparts of the PATENTS-IN-SUIT.

REQUEST FOR PRODUCTION NO. 3:
All DOCUMENTS that REFLECT, REFER TO or RELATE TO YOUR knowledge of
PRIOR ART RELATING TO the PATENTS-IN-SUIT.

REQUEST FOR PRODUCTION NO. 4:
All DOCUMENTS that REFLECT, REFER TO or RELATE TO the date and
circumstances pursuant to which YOU first learned of each piece of PRIOR ART RELATING
TO the PATENTS-IN-SUIT.

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REQUEST FOR PRODUCTION NO. 5:
All DOCUMENTS I/P ENGINE or its PREDECESSORS IN INTEREST consider
PRIOR ART, or which others have identified as PRIOR ART, to the PATENTS-IN-SUIT,
including but not limited to patents, publications, books, magazines, course materials, any
DOCUMENT reflecting prior knowledge, public uses, public sales or offers for sale, which have
a publication DATE or that existed before the issuance of the PATENTS-IN-SUIT.

REQUEST FOR PRODUCTION NO. 6:
All DOCUMENTS identifying any prior art systems to the PATENTS-IN-SUIT.

REQUEST FOR PRODUCTION NO. 7:
All DOCUMENTS RELATING TO any search engine or information filtering
technology that combines content based and collaborative filtering prior to December 3, 1998,
including any document relating to the sale, offer for sale, or public use or description of this
technology.

REQUEST FOR PRODUCTION NO. 8:
All DOCUMENTS that REFLECT, REFER TO or RELATE TO the conception,
diligence, reduction to practice, research, design, development, or testing of the subject matter
claimed in the PATENTS-IN-SUIT, including but not limited to laboratory notebooks, inventor
notebooks, and computer data, as well as the first written description or disclosure (including
drawings) and the first prototype of such subject matter.

REQUEST FOR PRODUCTION NO. 9:
All DOCUMENTS concerning any product, prototype, development version, test version,
commercial embodiment, or commercialization of any invention claimed in the PATENTS-INSUIT.

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REQUEST FOR PRODUCTION NO. 10:
All DOCUMENTS concerning the inventorship of any invention described, disclosed or
claimed in the PATENTS-IN-SUIT, including documents regarding any person considered for
inclusion as an inventor, and the contribution of each person involved in the conception,
development, and reduction to practice of the subject matter claimed as an invention in the
PATENTS-IN-SUIT.

REQUEST FOR PRODUCTION NO. 11:
All U.S. and foreign patents, printed publications, systems, products or physical devices,
provided to, received from, or identified to or by prosecution counsel for or during the
preparation and prosecution of the PATENTS-IN-SUIT.

REQUEST FOR PRODUCTION NO. 12:
All DOCUMENTS concerning any reissue, reexamination, continuation, divisional, or
continuation-in-part of the PATENTS-IN-SUIT, or other patent applications that claim priority
in or through the PATENTS-IN-SUIT.

REQUEST FOR PRODUCTION NO. 13:
All DOCUMENTS concerning any foreign patent application or foreign patent that
corresponds, in whole or in part, to the PATENTS-IN-SUIT, and all PRIOR ART cited in each
such foreign patent application or patent.

REQUEST FOR PRODUCTION NO. 14:
All DOCUMENTS concerning ownership of the PATENTS-IN-SUIT or other rights or
interests in the PATENTS-IN-SUIT, including but not limited to any proposed, requested, or
executed assignment, license, conveyance, and/or grant of any right, title or interest in or to the
PATENTS-IN-SUIT.

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REQUEST FOR PRODUCTION NO. 15:
All DOCUMENTS RELATING TO the patent prosecution for U.S. Patent Nos.
6,867,799 and 5,983,214 or their foreign counterparts, including the file wrappers for each
patent, all search reports and prior art identified in relation to those patents.

REQUEST FOR PRODUCTION NO. 16:
All DOCUMENTS concerning any investigations, analyses or searches conducted by or
for I/P ENGINE or disclosed to I/P ENGINE concerning PRIOR ART RELATING to the
PATENTS-IN-SUIT or search engine or information filtering technology.

REQUEST FOR PRODUCTION NO. 17:
All drafts of license agreements to the PATENTS-IN-SUIT.

REQUEST FOR PRODUCTION NO. 18:
All license agreements to the PATENTS-IN-SUIT.

REQUEST FOR PRODUCTION NO. 19:
All correspondence regarding any offers to license the PATENTS-IN-SUIT.

REQUEST FOR PRODUCTION NO. 20:
All documents relating to the licensing of U.S. Patent Nos. 6,867,799 and 5,983,214
including correspondence, drafts and final agreements.

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REQUEST FOR PRODUCTION NO. 21:
All DOCUMENTS that REFLECT, REFER TO or RELATE TO differences (or
similarities) between the PRIOR ART and any invention disclosed or claimed in the PATENTSIN-SUIT.

REQUEST FOR PRODUCTION NO. 22:
All DOCUMENTS that REFLECT, REFER TO or RELATE TO the manners or
techniques by which the PATENTS-IN-SUIT allegedly improved upon the PRIOR ART.

REQUEST FOR PRODUCTION NO. 23:
All DOCUMENTS that REFLECT, REFER TO or RELATE TO any of the secondary
considerations of nonobviousness of the PATENTS-IN-SUIT, including but not limited to
commercial success, long-felt need, attempts by others, failure of others, commercial
acquiescence, licensing, professional approval, copying, or laudatory statements by others
regarding the inventions claimed in the PATENTS-IN-SUIT.

REQUEST FOR PRODUCTION NO. 24:
All DOCUMENTS that REFLECT, REFER TO or RELATE TO any service offerings,
beta tests, or trials of search engine or information filtering technology that combine content
based and collaborative filtering prior to December 3, 1998.

REQUEST FOR PRODUCTION NO. 25:
All DOCUMENTS that REFLECT, REFER TO or RELATE TO any formal, informal,
written, or oral studies, analyses, opinions, pre-filing investigations or reports directed to the
scope of patentability, validity, enforceability, or INFRINGEMENT concerning the subject
matter shown, described, or claimed in the PATENTS-IN-SUIT, including specifically a
complete set of all DOCUMENTS comprising the pre-filing investigation of this case.

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REQUEST FOR PRODUCTION NO. 26:
All DOCUMENTS that REFLECT, REFER TO or RELATE TO any of Google’s
products, services, or methods alleged to INFRINGE the PATENTS-IN-SUIT, including all
DOCUMENTS referring to, REGARDING, or analyzing whether any Google has infringed the
PATENTS-IN-SUIT, either literally or under the doctrine of equivalents.

REQUEST FOR PRODUCTION NO. 27:
All DOCUMENTS concerning any product, service, method, prototype, development
version, commercial embodiment, or commercialization of any invention disclosed, described or
claimed in the PATENTS-IN-SUIT, related to the subject matter of the PATENTS-IN-SUIT, or
any of I/P ENGINE’s or its PREDECESSORS’-IN-INTEREST search engine or information
technology.

REQUEST FOR PRODUCTION NO. 28:
All DOCUMENTS concerning any manufacture, license, offer to license, use, sale, or
offer for sale, by or on behalf of any company controlled in whole or in part by or affiliated with
Andrew K. Lang and/or Donald M. Kosak, of any product, service, method, prototype,
development version, system, or method that is (1) disclosed, described, or claimed in the
PATENTS-IN-SUIT, (2) related to the subject matter of the PATENTS-IN-SUIT, or (3) related
to any search engine or information filtering technology.

REQUEST FOR PRODUCTION NO. 29:
All DOCUMENTS RELATED TO features, functionalities, or any other technological
components requested by any consumer as part of its use of, consideration of, or negotiation
concerning any search engine or information filtering technology, including but not limited to
technology associated with I/P ENGINE, its PREDECESSORS IN INTEREST, or any other

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company controlled in whole or in part by or affiliated with Andrew K. Lang and/or Donald M.
Kosak.

REQUEST FOR PRODUCTION NO. 30:
All DOCUMENTS RELATED TO the value to consumers of any features,
functionalities, or any other technological components of any search engine or information
filtering technology associated with I/P ENGINE, its PREDECESSORS IN INTEREST, or any
company controlled in whole or in part by or affiliated with Andrew K. Lang and/or Donald M.
Kosak.

REQUEST FOR PRODUCTION NO. 31:
All DOCUMENTS RELATED TO the value to consumers of any search engine or
information filtering technology associated with I/P ENGINE, its PREDECESSORS IN
INTEREST, or any company controlled in whole or in part by or affiliated with Andrew K. Lang
and/or Donald M. Kosak.

REQUEST FOR PRODUCTION NO. 32:
All DOCUMENTS identified, mentioned, referenced, reviewed, or relied upon in the
preparation of I/P ENGINE’s answers to any of DEFENDANTS’ interrogatories served on I/P
ENGINE in this matter.

REQUEST FOR PRODUCTION NO. 33:
All DOCUMENTS concerning or RELATING TO each of the legal and factual
allegations and requests for relief in I/P ENGINE’s claims, as well as in any subsequently added
or supplemental pleading in this Action.

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REQUEST FOR PRODUCTION NO. 34:
All DOCUMENTS identified, described or referred to in I/P ENGINE’s Fed. R. Civ. P.
26 disclosures.

REQUEST FOR PRODUCTION NO. 35:
All DOCUMENTS concerning any interrogatories or requests for admission propounded
by any of the DEFENDANTS in this Action, including documents relied upon or considered in
response to any of DEFENDANTS’ interrogatories or requests for admission.

REQUEST FOR PRODUCTION NO. 36:
All documents produced by YOU or your PREDECESSORS IN INTEREST, Andrew
K. Lang, and/or Donald M. Kosak in Lycos, Inc. v. TiVo Inc., No. 07-cv-11469 (D. Mass.), and
ChoiceStream Inc. v. Lycos, Inc., No. 1:10-cv-10065 (D. Mass.).

REQUEST FOR PRODUCTION NO. 37:
All DOCUMENTS concerning any communications with third parties regarding the
subject matter of this Action or the PATENTS-IN-SUIT.

REQUEST FOR PRODUCTION NO. 38:
All DOCUMENTS which RELATE TO, support or refute I/P ENGINE’s assertion that
any of Google’s products, services, methods, or systems infringe any of the claims of the
PATENTS-IN-SUIT.

REQUEST FOR PRODUCTION NO. 39:
All DOCUMENTS that support or refute I/P ENGINE’s assertion that the PATENTS-INSUIT are valid and enforceable.

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REQUEST FOR PRODUCTION NO. 40:
All DOCUMENTS sufficient to show I/P ENGINE’s first awareness of Google’s
activities that form the basis of its accusation that Google’s products, services, methods, or
systems infringe the PATENTS-IN-SUIT.

REQUEST FOR PRODUCTION NO. 41:
All DOCUMENTS concerning any steps I/P ENGINE or its PREDECESSORS IN
INTEREST took to enforce the PATENTS-IN-SUIT against any DEFENDANTS or any third
party.

REQUEST FOR PRODUCTION NO. 42:
All DOCUMENTS evidencing any damage or harm I/P ENGINE allegedly suffered as a
result of the sale, offer for sale, or use of any of the Google’s products, services, methods, or
systems.

REQUEST FOR PRODUCTION NO. 43:
All DOCUMENTS concerning sales, licensing, sales forecasts, budgets, expenses, costs,
and profitability of any products, services, systems, or methods developed, offered, marketed or
sold by I/P ENGINE or its PREDECESSORS IN INTEREST that embody any claim of the
PATENTS-IN-SUIT or that relate to any search engine or information filtering technology.

REQUEST FOR PRODUCTION NO. 44:
All DOCUMENTS concerning the labeling and marking with patent information of any
products, services, systems, or methods sold, marketed, or commercialized by I/P ENGINE, its
PREDECESSORS IN INTEREST, or any other company controlled by or affiliated with
Andrew K. Lang and/or Donald M. Kosak that embody any claim of the PATENTS-IN-SUIT.

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REQUEST FOR PRODUCTION NO. 45:
All DOCUMENTS relating to any computation, calculation or estimation of damages,
lost profits or reasonable royalties claimed in this Action.

REQUEST FOR PRODUCTION NO. 46:
DOCUMENTS sufficient to show any royalty rates to any patents relating to any search
engine or information filtering technology licensed by I/P ENGINE or its PREDECESSORS IN
INTEREST to any person(s).

REQUEST FOR PRODUCTION NO. 47:
All DOCUMENTS relating to I/P ENGINE’s patent licensing policies or the patent
licensing policies of I/P ENGINE’s PREDECESSORS IN INTEREST.

REQUEST FOR PRODUCTION NO. 48:
All DOCUMENTS relating to policies and procedures at I/P ENGINE’s or its
PREDECESSORS IN INTEREST related to pursuing patents, including policies and/or
procedures related to when to pursue patents, invention disclosures, patent prosecution, and the
citation of PRIOR ART.

REQUEST FOR PRODUCTION NO. 49:
All DOCUMENTS concerning any litigation, threatened litigation or possible litigation
involving the PATENTS-IN-SUIT.

REQUEST FOR PRODUCTION NO. 50:
All DOCUMENTS sufficient to identify the current shareholders, officers, and directors
of I/P ENGINE.

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REQUEST FOR PRODUCTION NO. 51:
All DOCUMENTS concerning the retention of documents, whether formal or informal,
by I/P ENGINE.

REQUEST FOR PRODUCTION NO. 52:
All DOCUMENTS concerning communications between I/P ENGINE and any of the
DEFENDANTS prior to initiation of this Action.

REQUEST FOR PRODUCTION NO. 53:
All DOCUMENTS concerning the assignment of the PATENTS-IN-SUIT or any interest
in the PATENTS-IN-SUIT to I/P ENGINE.

REQUEST FOR PRODUCTION NO. 54:
All 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.

REQUEST FOR PRODUCTION NO. 55:
All publications or draft publications concerning search engines, information filtering, or
recommendation system technology written by Andrew K. Lang and/or Donald M. Kosak,
including but not limited to the doctoral theses of Andrew K. Lang and/or Donald M. Kosak.

REQUEST FOR PRODUCTION NO. 56:
Any specifications provided to the inventors of the PATENTS-IN-SUIT that set forth the
functionality that any search engine they were designing was to have.

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REQUEST FOR PRODUCTION NO. 57:
All DOCUMENTS showing the value Plaintiff paid to acquire the PATENTS-IN-SUIT.

DATED: November 7, 2011

Respectfully submitted,
By /s/ David Bilsker
David Bilsker
[e-mail]
David A. Perlson
[e-mail]
QUINN EMANUEL URQUHART &
SULLIVAN, LLP
50 California Street, 22nd Floor
San Francisco, California 94111
Telephone:
[phone]
Facsimile:
[phone]
Stephen E. Noona
[e-mail]
KAUFMAN & CANOLES, P.C.
150 West Main Street
Post Office Box 3037
Norfolk, VA 23514
Telephone:
[phone]
Facsimile:
[phone]
Counsel for Defendant
Google, Inc.

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