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

Filing 217

Opposition to 200 MOTION for Sanctions Motion for Discovery Sanctions Regarding Untimely Disclosed Prior Art (Public Version) filed by Gannett Company, Inc., Google Inc., IAC Search & Media, Inc., Target Corporation. (Noona, Stephen)

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF VIRGINIA
NORFOLK DIVISION

UP ENGINE, INC.
Plaintiff,
Civil Action No. 2:1 1-cv-51 2

V.

AOL, INC., et al,,
Defendants.

OPPOSITION TO PLAINTIFF'S MOTION FOR DISCOVERY SANCTIONS

Introduction
Plaintiffs Motion for Discovery Sanctions seeks to strike three prior art references
("Bowman," "Culliss," and "Ryan") disclosed in Defendants' supplemental interrogatory
responses served on July 2, 2012. Defendants identified these references after repeatedly
seeking and finally obtaining Plaintiffs position on the scope of the claims. For example,
Plaintiff finally identified, at the Markman hearing, how it was construing and applying
collaborative filtering against the accused products. Plaintiffs position impacted the breadth of
the claims and the search for prior art.
While Plaintiff was derelict in identifying its positions, Plaintiff can point to no deadline
or obligation that Defendants violated in supplementing their interrogatory responses. These
responses were served the same day that Plaintiff supplemented its infringement contentions in
response to the claim construction. The responses were served several weeks before Defendants'
invalidity expert report issued, nine weeks before the close of expert discovery, and long before
the first expert has even been deposed. They were also served two weeks after the Court issued
its claim construction Order and four weeks after the Markman hearing. Unable to show that the
supplemental responses were untimely, Plaintiff then claims that the timing of the
supplementation results in three types of supposed prejudice that it cannot overcome. Each is
without merit.
First, Plaintiff claims the timing of the supplementation prevents it from preparing an
adequate response to the Bowman, Culliss and Ryan references. This is not the case.
Defendants supplemented their contentions almost eight weeks before Plaintiffs responsive
expert report on validity is due and nine weeks before the close of fact discovery. Plaintiff has
had more than adequate time to prepare its response. Yet, as with all the prior art Defendants
have disclosed, Plaintiff sought no discovery on these references before its motion.
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Second, Plaintiff claims that had it known about the references sooner, it may have tried
harder to answer the interrogatory asking for its conception and reduction to practice dates. This
argument rings hollow. Google had to obtain an Order requiring Plaintiff to identify its
conception date and then had to seek Court intervention again when Plaintiff failed to abide by
the Order. Plaintiff cannot credibly assert that it would only attempt to properly answer an
interrogatory and comply with a Court Order when the answer may be beneficial to it.
Third, Plaintiff claims it may have made different arguments regarding claim
construction had it known about the Bowman, Culliss and Ryan references. But, Plaintiff
identifies no argument that it would have made differently, let alone how it would explain to this
Court that the construction of the patents at issue somehow morphs and is malleable depending
on the prior art asserted. Moreover, Plaintiffs new position also contradicts its earlier opposition
to Google's and IAC Search & Media's demand that Plaintiff supplement its own infringement
contentions prior to the Markman hearing, and indeed Plaintiff was not ordered to supplement its
infringement contentions until after the Court's Markman hearing.
In summary, Defendants timely supplemented their invalidity contentions on July 2,
2012, four weeks after the Markman hearing, two weeks after the claim construction Order came
out, and on the same day Plaintiff supplemented its infringement contentions. Defendants have
violated no deadlines and Plaintiff has suffered no prejudice because of the supplemental
interrogatory response. Thus, Plaintiffs motion to strike the Bowman, Culliss and Ryan
references should be denied.
I.

FACTUAL BACKGROUND
A.

The Parties' Stipulation

On November 4, 2011, the parties entered into a stipulation pursuant to which Plaintiff
would serve "preliminary infringement contentions" by November 7, 2011 for Google Inc.
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("Google"), and November 11, 2011 for the other Defendants. (Declaration of Emily C. O'Brien
("O'Brien Deel."), Ex. A.) The parties also separately agreed that Defendants would serve
"preliminary invalidity contentions" by January 18, 2012 (later extended to January 24, 2012).
(Id., Ex. B, 2; Ex. C.) Neither the stipulation nor the agreement setting forth the November and
January dates included any language prohibiting the parties from later supplementing their
contentions. (Id., Exs. A-C.) Indeed, Plaintiff argued that it was entitled to "supplement on a
timely basis its contentions as discovery progresses," thus implicitly agreeing that Defendants
were also entitled to supplement their contentions on a timely basis as discovery progressed.
(See, e.g,, Dkt. No. 127, 6.) Plaintiff further agreed that unlike jurisdictions with Local Patent
Rules, "[t]his Court does not have local rules that require parties to provide infringement
contentions by a specific date, or requires the contents of such contentions, or restricts a party
from supplementing such contentions after a certain date unless good cause is shown." (Id., 8
(emphasis added).)
The parties also served and responded to contention interrogatories asking for the reasons
why prior art did not invalidate the claims and why the accused products did not infringe.

(See,

e.g., O'Brien Decl., Ex. D, 7-8; Ex. E, 5-17; Ex. F, 9; Ex. G, 13-19.)
Defendants' January 24 preliminary invalidity contentions discussed and charted six prior
art references that Defendants contended invalidate the asserted patents. (See Dkt. No. 201, Ex.
4.) Defendants focused their invalidity contentions on collaborative filtering references because
they believed that the asserted patents required a "collaborative" element. Similarly, in their
Markman briefing, Defendants focused on the "collaborative" nature of the alleged inventions in
the asserted patents. (See, e.g., Dkt. No. 122, 1-4.) Defendants took this position largely
because the patents' shared specification repeatedly described the claimed inventions as requiring

3

"collaborative" feedback, and the specification also states that word "collaborative" connotes
input from "users with similar interests or needs." (Id., 4, 6.)
Plaintiff responded to Google's Interrogatory No. 13 on March 22 and identified reasons
why it believed the initial references Defendants had identified did not invalidate the patents.
(O'Brien Decl., Ex. E, 5-17.) Subsequently, the parties prepared their Markman briefs to
construe the claims. The opening briefs were filed on April 12 and the responsive briefs were
filed on May 3. (Dkt. Nos. 122, 129, 158, 160.)
In the Markman briefing, Plaintiff agreed that the element in the '420 claims relating to
collaborative feedback must be construed to include "users with similar interests or needs."
Specifically, Plaintiff proposed construing "collaborative feedback data" from the asserted '420
claims as "information concerning what informons other users with similar interests or needs
found to be relevant." (Dkt. No. 166, Ex. A, 1 (emphasis added).) 1 Although it disputed that the
'664 claims be construed to require that the feedback be from "users with similar interests or
needs," Plaintiff agreed that the '664 claims required collaborative feedback. (See Dkt. No. 158,
3-4.)
B.

Defendants' Motions to Compel Plaintiff to Supplement its Infringement
Contentions and Provide Definite Conception, Reduction to Practice and
Priority Dates

Defendants brought two motions to compel fulsome written discovery responses. Each
of the motions related to how Defendants would search for prior art. First, Defendants Google
and IAC Search & Media, Inc. ("IAC Search") brought a motion to compel Plaintiff to
supplement its infringement contentions, in part because Plaintiffs existing infringement
Defendants' proposed construction of "collaborative feedback data" was quite similar
to Plaintiffs. Specifically, Defendants proposed construing this term as "data from users with
similar interests or needs regarding what informons such users found to be relevant." (See Dkt.
No. 166, Ex. A, 1 (emphasis added).)

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contentions did not explain where the accused products contained "collaborative feedback." (See
Dkt. No. 105, 10.) As outlined in more detail in Defendants' motion to compel, Defendants
exchanged multiple letters with Plaintiff regarding a number of deficiencies with Plaintiffs
February 2012 infringement contentions that made these contentions inadequate and insufficient
to understand Plaintiffs allegations regarding the accused products in the case. (Dkt. No. 105, 46.) Among other issues, Defendants noted that Plaintiff had not identified what it contends is
"collaborative feedback data" received by AdWords or AdSense for Search. (Id., 4.) During the
parties' meet and confer on the issue, Defendants noted that Plaintiffs contentions did not
mention "collaborative filtering" and asked whether it was Plaintiffs position that the patents do
not require collaborative filtering. (Id., 4-5.) Plaintiff refused to respond, except to state that it
believed it had identified the element in Google's advertising system that meets the requirement
for collaborative filtering in the patent claims. (Id., 5.) Defendants asked that Plaintiff point out
where in the contentions Plaintiff thought it had pointed to collaborative filtering. (Id.) Plaintiff
refused. (Id.) After Plaintiff continued to refuse to timely supplement its contentions,
Defendants moved to compel.
Defendants explicitly argued in their motion that Plaintiffs failure to identify any
"collaborative feedback" in the accused products was hindering Defendants' prior art search and
invalidity defense: "Plaintiff points to nothing in AdWords or AdSense for Search that it
contends is 'collaborative' feedback data . . If Plaintiff contends that Google AdWords and
AdSense for Search do not have to receive 'collaborative feedback data' to infringe the patentsin-suit, Google is entitled to know this now in order to prepare its invalidity defense." (See id.,
10 (emphasis added).)

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Second, Defendant Google brought a motion to compel Plaintiff to provide definite
conception, reduction to practice and priority dates that Plaintiff contends the asserted patents are
entitled to. (See Dkt. No. 88.) Plaintiff had previously stated in its interrogatory responses that
the patents are entitled to a priority date of "at least as early as" December 3, 1998. (See id., 1.)
Here too Google's motion to compel pointed out that this vague and open-ended response was
insufficient, in part because it hindered Google's prior art search: "For instance, Google cannot
focus its prior art search on references that pre-date the patents' priority date without knowing
what priority date Plaintiff believes the patents are entitled to." (Id, 2 (emphasis added).)
On May 2, 2012, the Court granted both motions to compel. (Dkt. No. 156.) In so doing,
the Court reminded both parties "of their existing and continuing duty to supplement disclosures
and discovery responses pursuant to Rule 26(e) of the Federal Rules of Civil Procedure,"
including "any disclosures provided by the parties pursuant to their Stipulation of November 4,
2011." (See id., 2.) Thus, the Court's Order confirms that the parties had both the right and duty
to continue supplementing their infringement, non-infringement, validity and invalidity
contentions as necessary.
On May 11, 2012, in response to the Court's Order to provide definite priority,
conception, and reduction-to-practice dates, Plaintiff served a supplemental interrogatory
response stating that "[e]ach of the asserted claims of the patents-in-suit are entitled to a priority
date of December 3, 1998 (based on the filing date of the patent application, U.S. Patent
Application No. 09/204,149, that issued as the '420 patent)." (O'Brien Deel., Ex. H, 17.)
Plaintiff also stated that "I/P Engine's present contention is that the constructive reduction to
practice date is the effective date of the '420 patent, i.e., December 3, 1998 (based on the filing
date of the patent application, U.S. Patent Application No. 09/204,149, that issued as the '420

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patent)." (Id., 5 (emphasis added).) Plaintiffs supplemental contention said nothing about the
conception date of the '420 or '664 claims. (Id.)
Given Plaintiffs failure to provide a definite conception or reduction to practice date, as
required by the Court's Order, Google again raised this issue with the Court during a telephonic
hearing. (O'Brien Decl., 1118.) The Court invited Google to file a formal motion to compel in
light of Plaintiffs failure to comply with the Court's Order. (Id.) As a result of additional
correspondence between the parties, and in an attempt to resolve the issue and avoid further
motion practice, the parties agreed that Plaintiff would supplement its interrogatory again to
comply with the Court Order. (Id.) Accordingly, on July 2 Plaintiff submitted a further
interrogatory response stating that "After a reasonable investigation of available information
including a review of the documents identified in Plaintiffs First Supplemental Response to
Interrogatory No. I and discussions with named inventors Andrew K. Lang and Donald Kosak,
Plaintiff is not aware of evidence sufficient to form a contention as to the conception of, or any
reduction to practice activities related to, the patents-in-suit prior to December 3, 1998."

(Id. ,

Ex. I, 6.)
C.

The Court Holds a Markman Hearing and Issues its Order

On June 4, 2012, the Court held a Markinan hearing. Plaintiffs disclosure of its reading
of the asserted patents during the Markman hearing had a significant impact on Defendants'
invalidity contentions. During Markman briefing, and at the Markman hearing, Plaintiff agreed
that both of the asserted patents required "collaborative feedback". (O'Brien Decl., Ex. J, 5.)
Plaintiff also agreed with Defendants that "collaborative feedback data" included information
regarding what "other users with similar interests or needs found to be relevant." (Id., 6.)
During the Markman hearing, Plaintiff disclosed what it actually understood the
collaborative feedback of the patents to require. Plaintiff stated during the Markman hearing that
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in the context of search engines, users entering the same query and the "clicks" on website results

as a result of that query was the "collaborative" data disclosed by the asserted patents. (O'Brien
Decl., Ex. K, 17-18) (describing users who searched for and clicked on ads for grills as users
with similar interests and the ads they clicked on as collaborative data).) In other words, Plaintiff
made clear its contention that what "users with similar interests or needs found to be relevant"
was determined solely on the basis of what ads or websites system users had clicked on in
response to the same query. (Id,, 34-36, 39 ("we { ] know it's coming flom users with similar
interests or needs because, in fact, they are the ones who clicked on the search results")) Based
on Plaintiffs interpretation of "collaborative feedback" and "users with similar interests or
needs" for purposes of its infringement contentions, as made clear for the first time during the
Markinan hearing, anticipatory art to the asserted patents may not need to compare user profiles
to determine which users have similar interests or needs, as was done in the references from
Defendants' preliminary invalidity contentions. Rather, anticipatory art under Plaintiffs' theories
could receive feedback from users at large, so long as those users had entered the same query.
Thus, this disclosure of how Plaintiff is construing the claims for purpose of infringement
broadened the universe of anticipatory art to the asserted patents, including Bowman, Culliss,
and Ryan. See White v. Dunbar, 119 U.S. 47, 51-52 (1886) (a patent claim is not a "nose of
wax" to be twisted one way to preserve a patent's validity and another way to catch an alleged
infringer).
The Court issued its Markman Order construing the claims on June 18. 2 (Dkt. No. 171.)
With respect to the collaborative feedback term, the Court construed it without the requirement

The Markman Order (Dkt. 171) is dated June 15, 2012, but it was sent to the parties on
June 18, 2012.
2

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that it include information from "users with similar interests or needs." 3 (Id., 10.) This claim
construction similarly broadened the universe of anticipatory art to the asserted patents.
D.

Defendants Disclose and Chart the Bowman, CuHiss, and Ryan References in
Response to Plaintiff's Markman Hearing Arguments and the Court's
Markman Order

On July 2, 2012, four weeks after the Court's Markman Order and two weeks after
receiving the Markman Order, Defendants served a supplemental interrogatory response
disclosing and charting the Bowman, Culliss, and Ryan references as anticipatory prior art.
(O'Brien Decl., Ex. L, 5-7, Exhibits A-7, A-8, A-9.) As Defendants noted in their supplemental
interrogatory response, "the Markman Order [] construed 'collaborative feedback data' and
'[feedback system for] receiving information found to be relevant to the query by other users' so
as not to require that the feedback or received information comes from users with similar
interests or needs, expanding the art relevant to this limitation." (O'Brien Decl,, Ex. L, 7.)
Notably, Plaintiff served supplemental contentions on July 2 as well. (Id., Ex. N.)
Significantly, Plaintiffs July 2 supplemental infringement contentions asserted several new
infringement theories.

The July 2 supplemental infringement
contentions, however, alleged for the first time several additional aspects of Google's systems
3 On August 16, 2012, the Court issued an Order granting in part and denying in part
Defendants' Motion for Reconsideration of the Markman Order. (Dkt. No. 212.) In this Order,
the Court changed its construction of "collaborative feedback data" to include the requirement of
"users with similar interests or needs." (Id., 4.) Bowman, Culliss, and Ryan, however, remain
important to the case given Plaintiffs disclosure at the Markman hearing that it interprets
determining what "users with similar interests or needs found to be relevant," as required by the
claims, to be met by determining what ads or websites system users had clicked on in response to
the same query. White v. Dunbar, 119 U.S. at 51-52.

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that supposedly meet these elements

.111111 Plaintiff also supplemented its contentions as to what aspect of Google's systems met
the "combining pertaining feedback data from the feedback system with the content profile data
in filtering each informon for relevance to the query" limitation in Claims 10(e) and 25(e) of the
'420 Patent.
111111.1a11.1111

1111

1.1111111.111.

OM. Additionally, in its July 2 supplementation, Plaintiff added doctrine of equivalents
arguments to its contentions regarding Claims 10(b), 10(e), 25(b) and 25(c) of the '420 Patent.
(See, e.g., id., 8,12, 20-21, 24.) Plaintiff had not made these equivalence arguments in its prior
contentions.
Plaintiffs July 2 supplemental contentions addressed and relied on the Court's Markman
Order by incorporating the Court's claim constructions into its contentions. For example, using
the language of the Court's construction of "scanning a network" as "looking for or examining
items in a network," Plaintiff contended that "Google AdWords looks for or examines items in a
network to make a single search engine query that is performed upon a user request for
information (e.g., advertisements) relevant to a query from a user. For example, the search bar

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on Google's website (www.google.com ) and other 'search network' sites allows a user to enter a
search query and run a single search engine query." (See, e.g., id., 18.)
E.

Plaintiff Delays Weeks In Objecting To Bowman, Culliss and Ryan

On July 17, Defendants wrote to Plaintiff asking when Plaintiff would supplement its
validity contentions to account for the Bowman, Culliss and Ryan prior art references. (Id, Ex.
0.) Plaintiff responded two days later stating it would "provide supplemental responses, to the
extent necessary, in due course." (Id.) Defendants received no supplemental response from
Plaintiff. Instead, on August 2 — one month after Defendants' July 2 supplementation and one
week after service of the Invalidity Report of Defendants' Expert Dr. Ungar — Plaintiff stated that
it wished to discuss Defendants' July 2 supplementation during a meet-and-confer already set for
later that day on another issue. (O'Brien Deel., lj 19.) During this meet-and-confer, Plaintiff first
stated its intention to strike the Bowman, Culliss, and Ryan references. (Id) Plaintiff filed the
present motion the next day.
H.

ARGUMENT
A.

Defendants' July 2 Supplementation Violated No Discovery Deadline or
Court Order

Plaintiff does not point to any discovery deadline or Court Order that Defendants' July 2
supplementation violated. Pursuant to the Rule 16(b) Scheduling Order in this case, fact
discovery does not close until September 4, 2012. (Dkt. No. 90, 2) Initial expert reports were
not served until July 25, 2012. (Dkt. No. 192, 1.) Rebuttal reports — including Plaintiffs first
and only report on validity — are not due until August 29, 2012. (Id.) Expert depositions will
likely not take place until after these expert reports are served. This timeframe not only shows
why Plaintiff was not prejudiced by Defendants' July 2 supplementation, it also shows why
Defendants' July 2 supplementation was timely.

11

Unable to show any discovery deadline or Court Order that Defendants violated, Plaintiff
bases its motion on Defendants' alleged violation of Fed. R. Civ. P. 37(c)(1) and 26(e)(1). (See
Dkt. No. 201, 6.) Rule 37(c)(1) states that a court may exclude evidence that is not disclosed
under Rule 26(e), while Rule 26(0(1) states that a party must supplement its interrogatory
responses in a timely manner if it learns that a prior response was incomplete. Rather than
supporting Plaintiffs motion, these rules demonstrate that Defendants supplementing their
responses was proper.
Plaintiff in its November 2011 and February 2012 infringement contentions refused to
disclose how it was interpreting the "collaborative feedback data" limitation of the asserted
patents. Defendants asked Plaintiff multiple times to explain what it understood "collaborative
feedback data" to mean, and where that limitation could be found in Google's AdWords or
AdSense for Search products. (Dkt. No. 105, 4-5.) Plaintiff continually refused to do so, forcing
Google and 1AC Search to move to compel supplemental infringement contentions. (Id.) While
the Court granted the motion to compel, it did not order Plaintiff to supplement until July 2.
(Dkt. No. 156, 2.) Accordingly, it was not until the Markman hearing on June 4 that Plaintiff
first disclosed what it meant by the "users with similar interests or needs" requirement in
"collaborative feedback data." (O'Brien Decl., Ex. K, 17-18, 34-35.) At that hearing, Plaintiff
for the first time made clear that it is asserting that in the "collaborative feedback data" limitation
is met by tracking the clicks on ads or websites by system users in response to the same query.
(Id) By disclosing this interpretation of the asserted claims for purposes of its infringement
contentions, Plaintiff significantly broadened the universe of anticipatory prior art. Defendants'
invalidity position could (and did) expand to include prior art references that do not compare
user profiles to determine which users have "similar interests or needs."

12

While v. Dunbar, 119

U.S. at 51-52. Thus, the Bowman, Culliss, and Ryan references became squarely anticipatory
art.
The Court's Markman Order similarly expanded the field of anticipatory art by
eliminating the filtering based on the "users with similar interests or needs" limitation from the
asserted patents — even though both parties' proposed claim constructions had asserted that at
least the '420 patent requires this limitation. 4 For this reason as well, the Bowman, Culliss, and
Ryan references became anticipatory art.
Defendants promptly identified this art and then disclosed it (along with the supporting
claim charts) on July 2, just four weeks after Plaintiffs disclosure of its contentions regarding
"collaborative feedback data," and 14 days after the Markman Order had issued. This constitutes
a timely supplementation under the Federal Rules. See, e.g., Transamerica Life Ins. Co. v.
Lincoln Nat. Life Ins. Co., 2007 WL 2790355, *5 (N.D. Iowa Sept. 24, 2007) ("The Court
understands that Transamerica's analysis in this regard is undoubtedly ongoing. In addition, it
may add or delete prior art references after the Court clarifies the claims following the Markman
hearing.").
Nor does this supplementation violate any "stipulation" between the parties, as Plaintiff
implies. (Dkt. No. 201, 2.) As outlined in detail above, the parties originally agreed to serve
infringement contentions and invalidity contentions in November 2011 and January 2012,
respectively. (O'Brien Deel., Exs. B-C.) There was no prohibition against supplementation in
4

Defendants' supplemental invalidity contentions were served in advance of the Court's
August 16 Order reversing this decision, and adding the "users with similar interests or needs"
requirement to the construction of "collaborative feedback data." (Dkt. No. 212.) Thus, the
Order does not change Defendants' proper reliance on the June 18 Markman Order in
supplementing their invalidity contentions. Moreover, because this Order has no impact on
Plaintiffs broad interpretation of "users with similar interests or needs'' for purposes of its
infringement contentions, the Bowman, Culliss and Ryan references should still be considered
anticipatory prior art references. White v. Dunbar, 119 U.S. at 51-52.

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these initial agreements. (Id.) Indeed, Plaintiff previously argued to this Court that it had the
right to "seasonably supplement its infringement contentions as discovery progresses." (See,
e.g., Dkt. No. 127, 6.) Just as Plaintiff was entitled to supplement its infringement contentions in
a timely fashion, and in fact was required by the Court's May 2 Order to do so, so too were
Defendants entitled to timely supplement their invalidity contentions.
B.

Plaintiffs Case Law Regarding Supplementation Is Inapposite

Plaintiff argues that "[t]his Court has held that, for a claim construction order to provide a
basis for a defendant to cite additional invalidating art, the order must have 'changed the rules of
the game," (citing eMus, Inc. v. Lawson Software, Inc., 2010 WL 3219318 at *2 (E.D. Va. Aug.
13, 2010). (Dkt. No. 201, 8.) But ePlus actually held that a Markman Order must "change the
rules of the game" in order to justify additional prior art submitted in violation of a Court
scheduling deadline. See ePlus, 2010 WL 3219318 at *2 ("A party's failure to abide by Court
scheduling deadlines may result in the exclusion of testimony. However, a court's claim
construction may provide a basis for a defendant to cite additional invalidating art when the
claim construction 'change[s] the rules of the game."). Specifically, the ePlus defendant was
under Court Order to revise and trim down its prior art list, yet it subsequently added new prior
art references in its expert invalidity report in violation of that Court Order. See id. at *1. By
contrast, Defendants July 2 supplementation violated no Court Order and no discovery deadline.
Thus, ePlus is inapposite.
Also inapposite is Plaintiffs reliance on several cases from the Northern District of
California and Eastern District of Texas, both jurisdictions with Local Patent Rules that require
disclosure of invalidity contentions by a particular date and prohibit supplementation of those
contentions absent "good cause" for doing so. See N.D. Cal. Local Patent Rule 3-6; RD. Tex.
Local Patent Rule 3-6. (See Dkt. No. 201, 8-12 (citing Finisar Corp. v. DirecTV Group, Inc.,
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424 F.Supp.2d 896, 901 (ED. Tex. 2006); Sunpower Corp. Sys. v. Sunlink Corp., 2009 WL
1657987, *1 (N.D. Cal, Jun. 12, 2009); Streak Prods., Inc. v. Antec, Inc., 2010 WL 3515752, *2
(N.D. Cal. Sep. 8, 2010); and Oracle Am., Inc. v. Google Inc., 2011 WL 3443835 (N.D. Cal.
Aug. 8, 2011)).) 5 But, there is no "good cause" standard for supplementation of interrogatory
responses in this Court, assuming that the supplementation does not violate any case deadlines.
Thus, Plaintiffs heavy reliance on cases from the Northern District of California and Eastern
District of Texas is inapposite.
Indeed, Plaintiff previously argued to this Court in this case that opinions from the
"Northern District of California and the Eastern District of Texas, are inapposite" because "[gins
Court does not have local rules that require parties to provide infringement contentions by a
specific date, or requires the contents of such contentions, or restricts a party from supplementing
such contentions after a certain date unless good cause is shown." (Dkt. No. 127, 8 (emphasis
added)) In essence, Plaintiff argues that Defendants have no right to supplement their invalidity
contentions during fact discovery, while simultaneously arguing that Plaintiff can supplement its
own infringement contentions at any date as discovery progresses with or without good cause.
This argument fails.
C.

Plaintiffs Untimeliness Argument is Wrong

Plaintiffs position — namely, that Defendants' July 2 supplementation was untimely under
the Federal Rules — is also not correct. As discussed above, Plaintiff supplemented its
In Oracle, the parties were bound by the local patent rules of the Northern District of
California, which allow the amendment of invalidity contentions "only by order of the Court
upon a timely showing of good cause." Oracle, 2011 WL 3443835 , at *1 (quoting Pat. L-R 3.6)
(emphasis added). As Plaintiff admits, there is no such "good cause" required in this Court.
Further, here Plaintiff has not presented any evidence that it was prejudiced by Google's
supplementation of prior art. Also, unlike in Oracle, Plaintiff has not limited its own case in any
manner during this litigation; Plaintiff still accuses all claims initially asserted in this action and
all broad infringement theories.
5

15

infringement contentions the same day as Defendants supplemented their invalidity contentions.
And while Plaintiff argues that Defendants wrongfully raised new prior art references in their
July 2 supplementation, Plaintiff ignores that it raised new infringement theories in its own July
2 supplementation.

11111111111111111111111=1.111111111111111111

1.11111.1111

1

1111111111111111= Plaintiff also for the first time in its

July 2 infringement contentions added doctrine of equivalents arguments related to Claims 10(b),
10(c), 25(b) and 25(c) of the '420 Patent, apparently conceding that AdWords may not literally
infringe the claims. (See, e.g., id., Ex. N, 8,12, 20-21, 24.)6 Thus, Plaintiffs untimeliness
argument is not sustainable given Plaintiffs own supplementation on July 2.

Plaintiff was also ordered by the Court to supplement by July 2, after Google and IAC
Search successfully moved to compel supplementation. (Dkt. No. 156, 2.) Thus, if Plaintiff is
correct that supplementation of contentions on July 2 was untimely, Plaintiff would actually have
benefitted from losing the motion to compel because absent a Court Order its infringement
contentions, which added new theories, would have been untimely too. Further, had Plaintiffs
moved to compel Defendants' supplementation in March, when they contend Defendants should
have supplemented, the Court would likely have ordered Defendants to supplement at the same
time as Plaintiff the day Defendants did in fact supplement.
6

16

D.

Plaintiff Fails to Demonstrate Prejudice from Defendants' July 2
Supplementation
1.

There is no prejudice under the schedule

As noted above, the July 2 supplementation came more than nine weeks before the close
of fact discovery, eight weeks before Plaintiffs validity report, and three weeks before
Defendants own invalidity report. This left Plaintiff adequate time to prepare a response to these
three references. But despite having known of these references since July 2, Plaintiff did not
seek any discovery on them prior to filing its motion. Accordingly, Plaintiffs vague allegation
that it lacks sufficient time to investigate and analyze these references lacks merit. (See Dkt. No.
201, 10.) Plaintiffs purported prejudice also rings hollow given that it also has not sought thirdparty discovery as to any other prior reference Defendants have presented — even those presented
in Defendants' initial invalidity contentions.
Plaintiff also waited a full month after the July 2 supplementation before first
complaining that this supplementation was allegedly improper. Plaintiffs delay in raising the
issue and its failure to request any discovery on these (or any other) references prior to filing its
motion demonstrate that Plaintiff has not suffered any timing-related prejudice from the
disclosure of these references on July 2. Plaintiff can therefore demonstrate no prejudice from
the addition of Bowman, CuHiss, and Ryan in Defendants' July 2 supplementation.
Moreover, the prior art references at issue are all publically available patents; information
regarding what these references allegedly disclose is a matter of public record. Plaintiff and its
expert, like the public, can easily read each reference and see exactly which parts of each
reference Google alleges discloses the claim elements of the construed claims Plaintiff is
asserting.

17

Finally, Plaintiffs claim that Defendants are trying to "ambush I/P Engine by piling on
new prior art references so late in the case" is also without merit. (Dkt. No. 201, 7.) Defendants
added only three prior art references to their invalidity contentions in their July 2
supplementation. This small number of additional prior art references hardly constitutes "piling
on" as Plaintiff asserts. Nor does Plaintiff explain how, with an expert and at least eight counsel
of record in this case, it is unable to respond to three prior art references.
2.

The July 2 supplementation did not prevent Plaintiff from providing a
priority date for the asserted patents

With nothing to point to in the schedule to show prejudice, Plaintiff claims that the July 2
addition of Bowman, Culliss and Ryan has somehow prejudiced its ability to provide a priority
date for the asserted patents. (See Dkt. No. 201, 12-13.) Plaintiff alleges that, had it known
about these references, it "would have conducted a more aggressive conception and reduction to
practice investigation to possibly pre-date the effective dates of Defendants' new prior art
references." (Id., 13.)
This argument is not eredible. 7 In granting Google's Motion to Compel Supplemental
Interrogatory Responses, the Court ordered Plaintiff to provide definite conception, reduction to
practice, and priority dates for the asserted patents. (Dkt. No. 156, 1-2.) In response to the
Court's Order, Plaintiff submitted an interrogatory response stating that "[e]ach of the asserted
The argument is even less credible given that it is Plaintiffs burden to prove a
conception date and that the Plaintiff holds all the facts relating to this issue. Am. Standard Inc.
v. Pfizer Inc., 722 F. Supp. 86, 109 (D. Del. 1989) ("In order to receive an effective date earlier
than the filing date of the [asserted patent] for the purpose of determining whether a reference is
prior art, 'a patentee has the burden of proving by clear and unequivocal evidence, that the
invention was both conceived and reduced to practice before the application date.'") (citations
omitted). The inventor knows when the invention was conceived and when he or she reduced
that invention to practice. The conception date of an invention does not change to suit Plaintiffs
litigation convenience. That Plaintiff again argues its ability to conform the conception date to
the defense in this case constitutes prejudice only further demonstrates that such alleged
prejudice, like the argument, is makeshift.
7

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claims of the patents-in-suit are entitled to a priority date of December 3, 1998." (O'Brien Decl.,
Ex. H, 17 (emphasis added).) After Google threatened to file a second motion to compel in light
of Plaintiffs failure to fully comply with the Court's Order, Plaintiff then submitted another
interrogatory response stating that "Ja]fter a reasonable investigation of available information
including a review of the documents identified in Plaintiffs First Supplemental Response to
Interrogatory No. 1 and discussions with named inventors Andrew K. Lang and Donald Kosak,
Plaintiff is not aware of evidence sufficient to form a contention as to the conception of, or any
reduction to practice activities related to, the patents-in-suit prior to December 3, 1998." (Id.,
Ex. I, 6 (emphasis added))
For Plaintiff to now state that it might have asserted an earlier priority date had it only
known about Bowman, Culliss and Ryan is effectively to admit that its prior interrogatory
responses (served under Court Order) were incomplete. In other words, Plaintiff posits that it
may have asserted a different priority date depending on which prior art references it wanted or
needed to swear behind. This position makes a mockery of the Court's Order for Plaintiff to
provide definite conception, reduction to practice, and priority dates. Plaintiff essentially admits
that, despite its sworn interrogatory response to the contrary, it did not actually conduct a
complete investigation to provide definite conception, reduction to practice, and priority dates.
Consequently, it is not Defendants' July 2 supplementation that prejudices Plaintiffs ability to
seek an earlier priority date. Rather, it is Plaintiffs own interrogatory response — asserting a
definite priority date of December 3, 1998 and disclaiming any knowledge of an earlier priority
date — that bars Plaintiff from changing its position.
Furthermore, Google successfully compelled Plaintiff to provide a definite priority date
precisely so that Google could focus its prior art search on references that pre-dated that priority

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date. (See Dkt. No. 88, 2 ("Google cannot focus its prior art search on references that pre-date
the patents' priority date without knowing what priority date Plaintiff believes the patents are
entitled to.").) For Plaintiff to argue that it cannot provide an accurate priority date without
knowing all of Google's prior art is to flip this logic upside-down. The Court should not
countenance this argument.
3.

The July 2 supplementation did not prejudice Plaintiffs ability to present
its Markman arguments

Plaintiff next argues that Defendants' July 2 supplementation "severely prejudices I/P
Engine by hiding Defendants' positions until after the claim construction process has completed."
(Dkt. No. 201, 1L) This supposed prejudice is also without merit.
First, the status of Bowman, Culliss, and Ryan as anticipatory art did not become clear
until after Plaintiff finally disclosed its contentions regarding the "collaborative feedback data"
limitation during the Markman hearing, and after the Court issued an Order excluding the "users
with similar interests or needs" requirement from that limitation. Thus, Defendants can hardly
be faulted for relying on these references after the Markman hearing and after the Markman
Order issued. See, e.g., Transamerica, 2007 WL 2790355 at *5 (holding that the party asserting
invalidity "may add or delete prior art references after the Court clarifies the claims following the
Markman hearing.").
Plaintiffs argument also ignores the prior ruling of this Court regarding supplemental
contentions. Defendants Google and 1AC Search asked the Court to order Plaintiff to
supplement its infringement contentions in advance of the Court's Markman hearing. (Dkt No.
105, 28.) Plaintiff opposed this motion, arguing that it was not required to supplement its
infringement contentions. (Dkt. No. 127.) The Court disagreed, granting Defendants' motion
and ordering Plaintiff to supplement its infringement contentions. (Dkt. No. 156, 2.) However,

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the Court did not agree that these infringement contentions needed to be supplemented in
advance of the Markman process. (Dkt No. 156; Dkt. No. 165, 32.) If supplemental
infringement contentions were not necessary for Defendants to present their claim construction
arguments, then supplemental invalidity contentions were not necessary for Plaintiff to present
its claim construction arguments.
Finally, even if it was theoretically possible that Defendants could prejudice Plaintiffs
Markman arguments by not supplementing their invalidity contentions until July 2, Plaintiff
provides no evidence or explanation for why it was actually prejudiced. In other words, Plaintiff
has not specified a single term that it might have construed differently had it been aware of the
three references disclosed in Defendants July 2 supplementation. Thus, Plaintiffs claims of
"Markman prejudice" should be dismissed as vague and unsupported conjecture.
III. CONCLUSION
Plaintiffs recently identified infringement positions and the Court's claim construction
exposed Plaintiffs patents to additional, invalidating prior art. Plaintiff seeks to avoid this
consequence by desperately trying to prevent Defendants from relying upon additional prior art
references by wrongly claiming that the references were disclosed late. Yet, Defendants violated
no deadlines when they supplemented their invalidity interrogatory response. They did so four
weeks after Plaintiff finally disclosed its contentions regarding a key claim limitation,
immediately after the Court's claim construction ruling, several weeks before Defendants' expert
invalidity report, almost two months before Plaintiffs responsive expert validity report, and even
longer before the discovery cutoff or any expert depositions have occurred. As a result,
Defendants' supplemental response was timely and Plaintiff suffered no prejudice.

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DATED: August 17, 2012

/s/ Stephen E. Noona
Stephen E. Noona
Virginia State Bar No. 25367
KAUFMAN & CANOLES, P.C.
150 West Main Street, Suite 2100
Norfolk, VA 23510
Telephone: [phone]
Facsimile: [phone]
[e-mail]
/s/ David Perlson
David A. Perlson
David Bilsker
QUINN EMANUEL URQUHART &
SULLIVAN, LLP

50 California Street, 22nd Floor
San Francisco, California 94111
Telephone: [phone]
Facsimile: [phone]
[e-mail]
[e-mail]
Counsel fbr Defendants GOOGLE INC., IAC SEARCH
& MEDIA, 1NC,, TARGET CORP., AND GANNETT
CO., INC.

CERTIFICATE OF SERVICE
I hereby certify that on August 17, 2012, I will electronically file the foregoing with the
Clerk of Court using the CM/ECF system, which will send a notification of such filing (NET) to
the following:
Jeffrey K. Sherwood
Kenneth W. Brothers
DICKSTEIN SHAPIRO LLP
1825 Eye Street NW
Washington, DC 20006

22

Telephone: [phone]
Facsimile: [phone]
[e-mail]
[e-mail]
Donald C. Schultz
W. Ryan Snow
Steven Staticliff
CRENSHAW, WARE & MARTIN, P.L.C.
150 West Main Street, Suite 1500
Norfolk, VA 23510
Telephone: [phone]
Facsimile: [phone]
[e-mail]
[e-mail]
[e-mail]
Counsel for Plaintiff I/P Engine, Inc.

Stephen E. Noona
Virginia State Bar No. 25367
KAUFMAN & CANOLES, P.C.
150 West Main Street, Suite 2100
Norfolk, VA 23510
Telephone: [phone]
Facsimile: [phone]
[e-mail]
Counsel _fin- Google Inc.,
Target Corporation,
IAC Search & Media, Inc., AOL Inc. and
Gannet Co., Inc.

Robert L. Burns
FINNEGAN, HENDERSON, FARABOW,
GARRETT & DUNNER, LLP
Two Freedom Square
11955 Freedom Drive
Reston, VA 20190
Telephone: [phone]
Facsimile: [phone]
Courtney S. Alexander
FINNEGAN, HENDERSON, FARABOW,
GARRETT & DUNNER, LLP
3500 SunTrust Plaza

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303 Peachtree Street, NE
Atlanta, GA 94111
Telephone: [phone]
Facsimile: [phone]
Counsel for Defendant AOL Inc.

/s/ Stephen E. Noana
Stephen E. Noona
Virginia State Bar No. 25367
KAUFMAN & CANOLES, P.C.
150 West Main Street, Suite 2100
Norfolk, VA 23510
Telephone: [phone]
Facsimile: (757) 624,3169
[e-mail]

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