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 G

AO 88B (Rev. 06/09) Subpoena to Produce Documents, Information, or Objects or to Permit Inspection of Premises in a Civil Action

UNITED STATES DISTRICT COURT
for the
District of Columbia
VP Engine, Inc.
Plaint(
v.

Civil Action No. 2:11-cv-512

Google Inc. et al.
(If the action is pending in another district, state where:

Defendant

Eastern District of Virginia

SUBPOENA TO PRODUCE DOCUMENTS, INFORMATION, OR OBJECTS
OR TO PERMIT INSPECTION OF PREMISES IN A CIVIL ACTION
To: Innovate/Protect, Inc., c/o Dickstein Shapiro LLP
1825 Eye Street, NW Washington, D.C. 20006

9( Production: YOU ARE COMMANDED to produce at the time, date, and place set forth below the following
documents, electronically stored information, or objects, and permit their inspection, copying, testing, or sampling of the
material: See Attachment A

Place: Quinn Emanuel LLP, attn: Patrick Fitch

Date and Time:

1299 Pennsylvania Ave. NW, Suite 825
Washington, D.C. 20004

12/21/2011 9:00 am

Ell Inspection of Premises: YOU ARE COMMANDED to permit entry onto the designated premises, land, or
other property possessed or controlled by you at the time, date, and location set forth below, so that the requesting party
may inspect, measure, survey, photograph, test, or sample the property or any designated object or operation on it.
Place:

Date and Time:

The provisions of Fed. R. Civ. P. 45(c), relating to your protection as a person subject to a subpoena, and Rule
45 (d) and (e), relating to your duty to respond to this subpoena and the potential consequences of not doing so, are
attached.
Date:

11/29/2011

CLERK OF COURT
OR
Signature of Clerk or Deputy Clerk

Attorney's signature

The name, address, e-mail, and telephone number of the attorney representing (name of party)
Google Inc. et al.
, who issues or requests this subpoena, are:
Joshua L. Sohn, Quinn Emanuel Urquhart & Sullivan, LLP
50 California Street, 22nd Floor, San Francisco, CA 94111
joshuasohnAquinnemanuel.com [phone]

AO 88B (Rev. 06/09) Subpoena to Produce Documents, Information, or Objects or to Permit Inspection of Premises in a Civil Action (Page 2)

Civil Action No. 2:11-cv-512
PROOF OF SERVICE
(This section should not be filed with the court unless required by Fed. R. Civ. P. 4 5.)
This subpoena for (name of individual and title, ( any)
was received by me on (date)
11 I served the subpoena by delivering a copy to the named person as follows:

on (date)

; or

71 I returned the subpoena unexecuted because:

Unless the subpoena was issued on behalf of the United States, or one of its officers or agents, I have also
tendered to the witness fees for one day's attendance, and the mileage allowed by law, in the amount of

My fees are $

for travel and $

for services, for a total of $

I declare under penalty of perjury that this information is true.

Date:
Server's signature

Printed name and title

Server's address

Additional information regarding attempted service, etc:

0.00

AO 88B (Rev. 06/09) Subpoena to Produce Documents, Information, or Objects or to Permit Inspection of Premises in a Civil Action(Page 3)

Federal Rule of Civil Procedure 45 (c), (d), and (e) (Effective 12/1/07)
(c) Protecting a Person Subject to a Subpoena.
(1) Avoiding Undue Burden or Expense; Sanctions.

A party or
attorney responsible for issuing and serving a subpoena must take
reasonable steps to avoid imposing undue burden or expense on a
person subject to the subpoena. The issuing court must enforce this
duty and impose an appropriate sanction — which may include lost
earnings and reasonable attorney's fees — on a party or attorney
who fails to comply.
(2) Command to Produce Materials or Permit Inspection.
(A) Appearance Not Required A person commanded to produce
documents, electronically stored information, or tangible things, or
to permit the inspection of premises, need not appear in person at the
place of production or inspection unless also commanded to appear
for a deposition, hearing, or trial.
(B) Objections. A person commanded to produce documents or
tangible things or to permit inspection may serve on the party or
attorney designated in the subpoena a written objection to
inspecting, copying, testing or sampling any or all of the materials or
to inspecting the premises — or to producing electronically stored
information in the form or forms requested. The objection must be
served before the earlier of the time specified for compliance or 14
days after the subpoena is served. If an objection is made, the
following rules apply:
(i) At any time, on notice to the commanded person, the serving
party may move the issuing court for an order compelling production
or inspection.
(ii) These acts may be required only as directed in the order, and
the order must protect a person who is neither a party nor a party's
officer from significant expense resulting from compliance.
(3) Quashing or Modifying a Subpoena.
(A) When Required On timely motion, the issuing court must
quash or modify a subpoena that:
(i) fails to allow a reasonable time to comply;
(ii) requires a person who is neither a party nor a party's officer
to travel more than 100 miles from where that person resides, is
employed, or regularly transacts business in person — except that,
subject to Rule 45(c)(3)(B)(iii), the person may be commanded to
attend a trial by traveling from any such place within the state where
the trial is held;
(iii) requires disclosure of privileged or other protected matter, if
no exception or waiver applies; or
(iv) subjects a person to undue burden.
(B) When Permitted To protect a person subject to or affected by
a subpoena, the issuing court may, on motion, quash or modify the
subpoena if it requires:
(i) disclosing a trade secret or other confidential research,
development, or commercial information;
(ii) disclosing an unretained expert's opinion or information that
does not describe specific occurrences in dispute and results from
the expert's study that was not requested by a party; or
(iii) a person who is neither a party nor a party's officer to incur
substantial expense to travel more than 100 miles to attend trial.
(C) Specij)ing Conditions as an Alternative. In the circumstances
described in Rule 45(c)(3)(B), the court may, instead of quashing or
modifying a subpoena, order appearance or production under
specified conditions if the serving party:
(i) shows a substantial need for the testimony or material that
cannot be otherwise met without undue hardship; and
(ii) ensures that the subpoenaed person will be reasonably
compensated.

(d) Duties in Responding to a Subpoena.
(1) Producing Documents or Electronically Stored Information.

These procedures apply to producing documents or electronically
stored information:
(A) Documents. A person responding to a subpoena to produce
documents must produce them as they are kept in the ordinary
course of business or must organize and label them to correspond to
the categories in the demand.
(B) Form for Producing Electronically Stored Information Not
Specified If a subpoena does not specify a form for producing
electronically stored information, the person responding must
produce it in a form or forms in which it is ordinarily maintained or
in a reasonably usable form or forms.
(C) Electronically Stored Information Produced in Only One
Form. The person responding need not produce the same
electronically stored information in more than one form.
(D) Inaccessible Electronically Stored Information. The person
responding need not provide discovery of electronically stored
information from sources that the person identifies as not reasonably
accessible because of undue burden or cost. On motion to compel
discovery or for a protective order, the person responding must show
that the information is not reasonably accessible because of undue
burden or cost. If that showing is made, the court may nonetheless
order discovery from such sources if the requesting party shows
good cause, considering the limitations of Rule 26(b)(2)(C). The
court may specify conditions for the discovery.
(2) Claiming Privilege or Protection.
(A) Information Withheld A person withholding subpoenaed
information under a claim that it is privileged or subject to
protection as trial-preparation material must:
(i) expressly make the claim; and
(ii) describe the nature of the withheld documents,
communications, or tangible things in a manner that, without
revealing information itself privileged or protected, will enable the
parties to assess the claim.
(B) Information Produced. If information produced in response to a
subpoena is subject to a claim of privilege or of protection as trialpreparation material, the person making the claim may notify any
party that received the information of the claim and the basis for it.
After being notified, a party must promptly return, sequester, or
destroy the specified information and any copies it has; must not use
or disclose the information until the claim is resolved; must take
reasonable steps to retrieve the information if the party disclosed it
before being notified; and may promptly present the information to
the court under seal for a determination of the claim. The person
who produced the information must preserve the information until
the claim is resolved.
(e) Contempt. The issuing court may hold in contempt a person
who, having been served, fails without adequate excuse to obey the
subpoena. A nonparty's failure to obey must be excused if the
subpoena purports to require the nonparty to attend or produce at a
place outside the limits of Rule 45(c)(3)(A)(ii).

ATTACHMENT A

DEFINITIONS
1.

“INNOVATE/PROTECT,” “you,” and “your” means Innovate/Protect, 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
Innovate/Protect, 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 Innovate/Protect, Inc., and all predecessors and successors in interest to such
entities or to the ‘420 PATENT or the ‘664 PATENT.
2.

“PLANTIFF” or “I/P ENGINE” means Plaintiff 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.
3.

“’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.
4.

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

System and Method for Integrated Content-Based and Collaborative/Adaptive Feedback

01980.51928/4466689.1

1

Queries,” all underlying patent applications, all continuations, continuations-in-part, divisionals,
reissues, and any other patent applications in the ’664 PATENT family.
5.

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

individually and collectively.
6.

“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.
7.

“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.
8.

“Google” means Defendant Google, Inc.

9.

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

Gannett Company, Inc., and Target Corporation.
10.

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.
11.

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

infringement, infringement by inducement, literal infringement, and infringement by the doctrine
of equivalents.
12.

“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.

01980.51928/4466689.1

2

13.

“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.
14.

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

15.

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

16.

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.
17.

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

18.

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 you have concerning the
unanswered portion of any such Document Requests.

01980.51928/4466689.1

3

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)

01980.51928/4466689.1

the number of pages in such document; and

4

(g)

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

document.
7.

If your response to a particular Document Request is a statement that you lacks

the ability to comply with that Document Request, you must specify whether 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 your
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.

Your 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 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;

01980.51928/4466689.1

5

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;
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) all correspondence regarding the patent applications referred to in subparts (c)
through (e) above;
g) 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 (e) above, including but not
limited to PRIOR ART references or potential PRIOR ART references; and
h) 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
INNOVATE/PROTECT or I/P ENGINE that are directed to the subjectmatter disclosed in the PATENTS-IN-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.

01980.51928/4466689.1

6

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.

REQUEST FOR PRODUCTION NO. 5:
All DOCUMENTS that INNOVATE/PROTECT, I/P ENGINE, or the 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-INSUIT.

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 U.S. or foreign counterpart applications or
patents to the PATENTS-IN-SUIT.

REQUEST FOR PRODUCTION NO. 8:
All DOCUMENTS RELATING TO any search engine or information filtering
technology that combines content based and collaborative filtering prior to December 3, 1998,

01980.51928/4466689.1

7

including any document relating to the sale, offer for sale, or public use or description of this
technology.

REQUEST FOR PRODUCTION NO. 9:
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. 10:
All DOCUMENTS concerning any product, prototype, development version, test version,
commercial embodiment, or commercialization of any invention claimed in the PATENTS-INSUIT.

REQUEST FOR PRODUCTION NO. 11:
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.

01980.51928/4466689.1

8

REQUEST FOR PRODUCTION NO. 12:
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. 13:
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. 14:
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. 15:
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.

01980.51928/4466689.1

9

REQUEST FOR PRODUCTION NO. 16:
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. 17:
All DOCUMENTS concerning any investigations, analyses or searches conducted by or
for INNOVATE/PROTECT or disclosed to INNOVATE/PROTECT concerning PRIOR ART
RELATING to the PATENTS-IN-SUIT or search engine or information filtering technology.

REQUEST FOR PRODUCTION NO. 18:
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. 19:
All drafts of license agreements to the PATENTS-IN-SUIT.

REQUEST FOR PRODUCTION NO. 20:
All license agreements to the PATENTS-IN-SUIT.

REQUEST FOR PRODUCTION NO. 21:
All correspondence regarding any offers to license the PATENTS-IN-SUIT.

01980.51928/4466689.1

10

REQUEST FOR PRODUCTION NO. 22:
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. 23:
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. 24:
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. 25:
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. 26:
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

01980.51928/4466689.1

11

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.

REQUEST FOR PRODUCTION NO. 27:
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. 28:
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 INNOVATE/PROTECT’s, I/P ENGINE’s, or the PREDECESSORS IN INTEREST’s
search engine or information filtering technology.

REQUEST FOR PRODUCTION NO. 29:
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.

01980.51928/4466689.1

12

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

01980.51928/4466689.1

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REQUEST FOR PRODUCTION NO. 33:
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. 34:
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.

REQUEST FOR PRODUCTION NO. 35:
All DOCUMENTS identified, described or referred to in I/P ENGINE’s Fed. R. Civ. P.
26 disclosures.

REQUEST FOR PRODUCTION NO. 36:
All DOCUMENTS concerning any interrogatories or requests for admission propounded
by any of the DEFENDANTS in this Action, including documents relied upon or considered by
I/P ENGINE in response to any of DEFENDANTS’ interrogatories or requests for admission.

REQUEST FOR PRODUCTION NO. 37:
All documents produced by you, I/P ENGINE, the 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.).

01980.51928/4466689.1

14

REQUEST FOR PRODUCTION NO. 38:
All DOCUMENTS concerning any communications with third parties regarding the
subject matter of this Action or the PATENTS-IN-SUIT.

REQUEST FOR PRODUCTION NO. 39:
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 PATENTSIN-SUIT.

REQUEST FOR PRODUCTION NO. 40:
All DOCUMENTS that support or refute I/P Engine’s assertion that the PATENTS-INSUIT are valid and enforceable.

REQUEST FOR PRODUCTION NO. 41:
All DOCUMENTS sufficient to show both your and I/P Engine’s first awareness of
Google’s activities that form the basis of I/P ENGINE’s accusation that Google’s products,
services, methods, or systems infringe the PATENTS-IN-SUIT.

REQUEST FOR PRODUCTION NO. 42:
All DOCUMENTS concerning any steps INNOVATE/PROTECT, I/P ENGINE, or the
PREDECESSORS IN INTEREST took to enforce the PATENTS-IN-SUIT against any
DEFENDANTS or any third party.

01980.51928/4466689.1

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REQUEST FOR PRODUCTION NO. 43:
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. 44:
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 you, I/P ENGINE, or the 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. 45:
All DOCUMENTS concerning the labeling and marking with patent information of any
products, services, systems, or methods sold, marketed, or commercialized by you, I/P ENGINE,
the 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.

REQUEST FOR PRODUCTION NO. 46:
All DOCUMENTS relating to any computation, calculation or estimation of damages,
lost profits or reasonable royalties claimed in this Action.

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REQUEST FOR PRODUCTION NO. 47:
DOCUMENTS sufficient to show any royalty rates to any patents relating to any search
engine or information filtering technology licensed by you, I/P ENGINE, or the
PREDECESSORS IN INTEREST to any person(s).

REQUEST FOR PRODUCTION NO. 48:
All DOCUMENTS relating to your patent licensing policies, the patent licensing policies
of I/P ENGINE, or the patent licensing policies of the PREDECESSORS IN INTEREST.

REQUEST FOR PRODUCTION NO. 49:
All DOCUMENTS relating to your, I/P ENGINE’s, or the PREDECESSORS IN
INTEREST’s policies and procedures 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. 50:
All DOCUMENTS concerning any litigation, threatened litigation or possible litigation
involving the PATENTS-IN-SUIT.

REQUEST FOR PRODUCTION NO. 51:
All DOCUMENTS sufficient to identify the current shareholders, officers, and directors
of INNOVATE/PROTECT and I/P ENGINE.

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REQUEST FOR PRODUCTION NO. 52:
All DOCUMENTS concerning the retention of documents, whether formal or informal,
by INNOVATE/PROTECT or I/P ENGINE.

REQUEST FOR PRODUCTION NO. 53:
All DOCUMENTS concerning communications between I/P ENGINE and any of the
DEFENDANTS prior to initiation of this Action.

REQUEST FOR PRODUCTION NO. 54:
All DOCUMENTS concerning communications between you and any of the
DEFENDANTS prior to initiation of this Action.

REQUEST FOR PRODUCTION NO. 55:
All DOCUMENTS concerning the assignment of the PATENTS-IN-SUIT or any interest
in the PATENTS-IN-SUIT.

REQUEST FOR PRODUCTION NO. 56:
All DOCUMENTS concerning any proposed merger, acquisition, or sale of substantially
all of the assets of INNOVATE/PROTECT, I/P ENGINE, or the PREDECESSORS IN
INTEREST, including ALL DOCUMENTS concerning any diligence, presentations, proposals,
term sheets and letters of intent relating to the same.

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REQUEST FOR PRODUCTION NO. 57:
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. 58:
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.

REQUEST FOR PRODUCTION NO. 59:
All DOCUMENTS showing the value that you, I/P ENGINE, or the PREDECESSORS
IN INTEREST paid to acquire the PATENTS-IN SUIT.

REQUEST FOR PRODUCTION NO. 60:
All DOCUMENTS RELATING TO the corporate relationship between you and I/P
ENGINE.

REQUEST FOR PRODUCTION NO. 61:
All DOCUMENTS REFLECTING communications between or amongst you, I/P
ENGINE, Andrew K. Lang, Donald M. Kosak, and/or the PREDECESSORS IN INTEREST that
RELATE TO the PATENTS-IN-SUIT.

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REQUEST FOR PRODUCTION NO. 62:
All DOCUMENTS REFLECTING communications between or amongst you, I/P
ENGINE, Andrew K. Lang, Donald M. Kosak, and/or the PREDECESSORS IN INTEREST that
RELATE TO this Action.

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