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

Filing 218

Declaration re 217 Opposition Of Emily O'Brien In Support Of Defendants' Opposition To Plaintiff's Motion For Discovery Sanctions by Gannett Company, Inc., Google Inc., IAC Search & Media, Inc., Target Corporation. (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)(Noona, Stephen)

EXHIBIT B

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF VIRGINIA
NORFOLK DIVISION
I/P ENGINE, INC.,
Plaintiff,
v.
AOL, INC. et al.,
Defendant.

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Civ. Action No. 2:11-cv-512

[PROPOSED] JOINT DISCOVERY PLAN
Plaintiff I/P Engine, Inc. (“I/P Engine”) and Defendants AOL, Inc., Google, Inc., IAC
Search & Media, Inc., Gannett Company, Inc. and Target Corporation jointly submit this
proposed Discovery Plan. On November 4, 2011, the undersigned counsel for the parties
conferred to consider the nature and basis of their claims and defenses, to arrange for the
disclosures required by Rule 26(a)(1) of the Federal Rules of Civil Procedure (“Federal Rules” or
“Rule”), and to develop this proposed discovery plan.
I.

DISCLOSURE SCHEDULE
A.

Initial Disclosures

The parties served their Rule 26(a)(1)(A) disclosures on November 18, 2011.
B.

Claim Charts

Pursuant to a Stipulation dated November 4, 2011 agreed upon by the parties, Plaintiff
served preliminary claim charts on November 7, 2011.

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C.

Invalidity and Unenforceability Contentions

Separate from and in addition to any responses to Plaintiff’s written discovery,
Defendants shall serve Invalidity and Unenforceability Contentions on or before January 18,
2012, which must identify as specifically as possible the following:
1) The facts and assertions related to Defendants’ invalidity positions under
35 U.S.C. §§ 102 and 103, including each item of prior art that Defendants
contend anticipates each specified claim and each item or combination of prior art
that Defendants contend renders each claim obvious and the motivation to
combine such items.
2) A claim chart that compares allegedly invalidating prior art to each asserted claim
on a claim limitation by claim limitation basis. Where Defendants contend that a
claim limitation is governed by 35 U.S.C. § 112, sixth paragraph, Defendants
shall identify the function recited in the claim and the corresponding structure(s),
act(s) or material(s) in each item of prior art that correspond to the structure
identified in the patent specification that performs the claimed function.
3) Facts and assertions relevant to invalidity positions under 35 U.S.C. § 112,
including any grounds for invalidity for any of the asserted claims based on
indefiniteness, enablement or written description.
4) Facts and assertions relevant to any contention that any patent in suit is
unenforceable.
D.

Supplementation of Claim Charts and Invalidity and Unenforceability
Contentions

The parties shall timely supplement their respective claim charts and contentions when
additional information becomes known.
II.

AMENDMENTS TO THE PLEADINGS
All motions seeking to amend pleadings must be filed by [TBD]. All motions seeking to

join new parties must be filed by [TBD]. Motions for amendment or joinder after those dates
will not be allowed except for good cause.
III.

PROTECTIVE ORDER
The parties shall submit a stipulated Protective Order to this Court on or before [TBD], or

should they fail to agree by the date, they shall file any motions for entry of a Protective Order.
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The parties mutually agree that until the Court enters a Protective Order, all documents produced
pursuant to this Plan, or pursuant to Rule 26(a)(1), or in response to discovery requests, or any
depositions taken, shall be treated by the receiving party as Attorneys Eyes Only. In no event
shall any party withhold producing its documents based on confidentiality concerns (other than
third-party obligations) or the fact that the Protective Order has not yet been entered.
IV.

DISCOVERY OF ELECTRONICALLY-STORED INFORMATION
On or before [TBD], the parties shall present a stipulation for the preservation and

production of electronically-stored information (“ESI”) or, in the event that the parties cannot
agree on an ESI stipulation, each party shall file a motion regarding ESI discovery. In no event
shall any party refrain from preserving or collecting documents for production based on the fact
that the parties have not yet entered into a stipulation. During these negotiations, all parties
agree to provide detailed information, upon request, about their efforts to preserve, collect and
produce ESI, so that any other party and, if necessary, the Court may properly assess the scope
and nature of such efforts to ensure compliance with Rule 26(b).
V.

FACT DISCOVERY SCHEDULE AND LIMITATIONS
The scope of discovery shall be governed by the Federal Rules of Civil Procedure, as

modified by the following provisions, subject to the parties’ right to seek (or agree upon)
additional or modified discovery provisions under appropriate circumstances.
A.

Timing of Fact Discovery

All fact discovery including, written, document and deposition discovery, shall be
concluded no later than [TBD].
B.

Fact Witness Depositions

Rule 30(b)(6) depositions. Plaintiff shall primarily seek factual deposition discovery of
defendant pursuant to Rule (b)(6), which shall count as a single fact deposition, regardless of
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Deleted: Discovery opens upon the execution of
this stipulation.

number of notices, topics, or witnesses. The duration of the Rule 30(b)(6) deposition of Google
shall not exceed 15 hours, and the duration of the Rule 30(b)(6) deposition of AOL shall not
exceed 12 hours. All other Rule 30(b)(6) depositions shall not exceed seven hours.
Individual Rule 30(b)(1) fact depositions. Plaintiff may depose current officers,
directors, agents and employees of each defendant as shown below.
Party

Number of witnesses Cumulative total of Rule 30(b)(1) depositions

Google

7

30 hours

AOL

5

25 hours

IAC

4

20 hours

Gannett

3

15 hours

Target

3

15 hours

No single witness will sit for more than 7 hours of Rule 30(b)(1) deposition unless
separately agreed upon by the parties. The parties shall cooperate in the scheduling of the
depositions. Parties shall in good-faith attempt to avoid duplicative questioning; provided that
each Defendant’s counsel may make a reasonable, non-duplicative examination on topics
particular to his or her client, and may ask reasonable, non-duplicative follow-up questions based
on the questioning of any other Defendant’s counsel.
The length of deposition time shall be determined solely by the official court reporter or
videographer. The party requesting the deposition shall be responsible for arranging the reporter
and location, unless otherwise agreed by the parties.
C.

Depositions of Inventors

Defendants will designate one attorney for each inventor that is deposed who will take
the lead in asking questions for all Defendants; provided, that the designation of a lead counsel

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Formatted: Underline

for the examination will not preclude counsel for any other Defendant from making a reasonable,
non-duplicative examination, or from asking reasonable, non-duplicative follow up questions.
D.

Requests for Admission

Collectively, Defendants may serve up to 35 Requests for Admission on Plaintiff, and
Plaintiff may serve up to 35 Requests for Admission collectively on Defendants. These limits
shall not apply to Requests for Admission that solely address the authenticity of documents.
VI.

EXPERT DISCOVERY SCHEDULE AND LIMITATIONS
A.

Timing of Expert Discovery

All expert discovery shall be completed by [TBD].
B.

Expert Designations

The parties will undertake reasonable efforts to avoid the designation of duplicative
expert witnesses. The parties shall identify testifying experts for which expert disclosures are
required by Rule 26(a)(2) on or before [TBD].
C.

Expert Disclosures

The parties shall exchange expert disclosures required by Rule 26(a)(2) of the Federal
Rules on all issues on which they bear the burden of proof on [TBD]. The parties shall exchange
rebuttal expert disclosures on [TBD]. The parties shall exchange reply expert disclosures on
[TBD]. Simultaneous with each expert disclosure, the disclosing party shall produce all
documents not previously produced that were considered by the expert in connection with expert
disclosures required by Rule 26(a)(2).
D.

Supplemental Expert Disclosures

If the Court’s claim construction ruling is issued subsequent to the party’s expert
disclosures and if a party believes in good faith that the Court’s claim construction ruling so

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Deleted: ¶

requires, no later than 30 days after the Court’s ruling, a party may supplement its expert
disclosures solely to address the Court’s claim construction.
E.

Expert Depositions

During expert discovery, each testifying expert witness may be deposed for no more than
seven hours total on each expert report (e.g., up to 7 hours on infringement/non-infringement; 7
hours on invalidity/validity; 7 hours on inequitable conduct or other unenforceability issues; 7
hours on damages). Depositions of experts shall not count against the hour limitations for fact
Deleted: ¶

witnesses.
VII.

OTHER MATTERS
A.

Service of Pleadings, Motions, Other Papers and Discovery Requests and
Responses

All pleadings, motions and other papers that are filed are to be served on the other party
electronically as provided by the Federal Rules and local rules. In addition, the parties agree to
serve by email all discovery requests and written responses and the other papers that are not
filed. When calculating response dates, in accordance with the Federal Rules as to electronic
service, each party shall receive 3 additional days for responding to all pleadings, motions and
other papers filed, and all discovery requests and written responses and the other papers that are
not filed.
B.

Drafts and Counsel Communications with Experts

The parties agree that no notes, drafts, or other type of preliminary written work by or for
experts concerning the subject matter of this litigation shall be the subject of discovery or inquiry
at trial. No communication, whether written or verbal, between or among any expert(s) and
counsel for the party retaining said expert(s) concerning the subject matter of this litigation shall
be the subject of discovery or inquiry at trial. The foregoing shall not apply to any

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communications or documents upon which the expert relied in forming his or her opinion as
expressed in an affidavit, disclosure, report, or testimony, or on which an expert intends to reply
as a basis for an opinion expressed in an affidavit, disclosure, report, or testimony, in connection
with this litigation; such communications may be subject to discovery and inquiry at trial.
Materials, communications, and other information exempt from discovery under this paragraph
shall be treated as attorney work product.
C.

Privilege Logs

The parties’ privilege logs shall comply with Section 6.F of the Protective Order.
[Exclusion of emails to be discussed.] Each party shall endeavor in good faith to provide their

Formatted: Highlight
Formatted: Not Highlight

initial privilege log by no later than January 30, 2012. Each party’s log shall timely be
supplemented within 30 days after each document production made after January 2, 2012.
D.

30(b)(6) Witness Designations

The parties agree to attempt in good faith to identify the corporate representative being
offered to testify as a witness pursuant to Rule 30(b)(6) and the topics on which the witness is
being offered to testify seven days in advance of the agreed-upon deposition date.
E.

Third Party Materials

Unless otherwise agreed to by the parties on a specific basis, the parties shall attempt in
good faith to provide or make available all materials obtained from third parties pursuant to Rule
45 of the Federal Rules within three business days of the receipt of such materials. PRETRIAL
AND MARKMAN HEARINGS
F.

Claim Construction Procedures

The parties shall submit a Joint Motion for Expedited Markman Hearing on or before
[TBD]. The parties agreed that a Markman hearing, if necessary, shall be held on [TBD], or as

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Deleted: ¶

soon thereafter as practicable for the Court. In advance of a hearing date, the parties involved
shall prepare and submit briefs in accordance with the following briefing schedule:
1) The parties shall exchange a list of claim terms to be construed on January [TBD]
2) The parties shall exchange proposed constructions for the exchanged claim terms
on [TBD]. The proposed constructions are not binding on any party and cannot
be cited by any party. The parties shall make reasonable, good faith efforts to
identify specific support for their proposed constructions (i.e., by reference to the
column and line numbers of the specification, page numbers of the file history,
and/or specific reference to other evidence that the party intends to rely upon).
Shortly thereafter, the parties shall meet and confer to agree on the claim terms to
be construed by the Court. If one party does not believe a term requires
construction but the other party does, such term shall be included in the list of
terms for potential construction by the Court.
3) The parties shall serve and file opening claim construction briefs, limited to 30
pages, on [TBD] setting forth their arguments in support of their claim
construction positions.
4) The parties shall serve and file responsive claim construction briefs, limited to 20
pages, on [TBD].
5) Plaintiff will serve and file a jointly prepared Prehearing Statement on Claim
Construction on [TBD] including a chart showing the claim terms in contention,
each party’s proposed construction of each claim term in contention, and the
alleged support for each party’s construction.
G.

Daubert Motions and Motions in Limine

The parties agree that all Daubert motions to exclude experts or expert testimony and all
motions in limine shall comply with the following briefing schedule:
1) The parties shall serve and file any Daubert Motion or Motion in Limine on
[TBD].
2) The parties shall serve and file any responsive briefs opposing a party’s Daubert
Motion or Motion in Limine on [TBD].
3) The parties shall serve and file any reply briefs in support of a party’s Daubert
Motion or Motion in Limine on [TBD].
4) The parties will advise the Court of any agreements regarding Motions in Limine
on [TBD].

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H.

Dispositive Motions

Dispositive Motions shall be filed by [TBD] and set for hearing on the earliest available
motions day thereafter. A motion for summary judgment may be made in accordance with the
schedule agreed upon by the parties. For summary judgment purposes, the parties involved shall
prepare and submit briefs in accordance with the following briefing schedule:
1) The parties shall serve and file any motion for summary judgment on [TBD].
2) The parties shall serve and file any responsive briefs opposing a party’s motion
for summary judgment on [TBD].
3) The parties shall serve and file any reply briefs in support of a party’s motion for
summary judgment on [TBD].
VIII. SETTLEMENT CONFERENCES
A settlement conference may be requested at any time in this litigation. The Court may
refer the parties to consult with a United States Magistrate Judge regarding settlement.
IX.

TRIAL
A.

Magistrate Judge

The parties do not agree to proceed to trial before a Magistrate Judge.
B.

Jury Trial

A jury trial has been demanded.
C.

Trial date and Trial Time

The parties agreed that this litigation will be set for trial by jury to commence on [TBD],
or within 4-8 weeks of the final pretrial conference to be held on [TBD], or as soon thereafter as
practicable for the Court. Assuming that all parties remain in this litigation and that all patentsin-suit are still at issue, the parties estimate that trial by jury of all claims, defenses and
counterclaims will take 10 days. In advance of trial, the parties involved shall prepare in
accordance with the following schedule:

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1) The parties shall exchange pretrial disclosures including deposition designations,
witness lists, exhibit lists and fact stipulations on [TBD].
2) The parties shall exchange objections to a party’s pretrial disclosures including
objections to deposition designations, objections to witness lists, objections to
exhibit lists, objections to fact stipulations, and counter designations on [TBD].
3) The parties shall exchange objections to counter designations on [TBD].
4) The parties shall meet and confer regarding pretrial disclosures, the marking of
exhibits and the preparation of stipulations on [TBD].
5) The parties shall file a final pretrial order on [TBD].
6) Plaintiff will serve proposed July Instructions and Verdict Sheet on [TBD].
7) Defendants will serve responses or objections to the proposed July Instructions
and Verdict Sheet on [TBD].
8) The parties will file and serve Proposed Voir Dire and July Instructions on [TBD].
This stipulation may be submitted to the Court by any party.
Dated: November ___, 2011

By: _________________________________
Jeffrey K. Sherwood (Virginia Bar No. 19222)
Frank C. Cimino, Jr.
Kenneth W. Brothers
DeAnna Allen
DICKSTEIN SHAPIRO LLP
1825 Eye Street, NW
Washington, DC 20006
Telephone: [phone]
Facsimile: [phone]
Counsel for Plaintiff I/P Engine, Inc.

Dated: November ____, 2011

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By: _________________________________
David Bilsker
QUINN EMANUEL URQUHART &
SULLIVAN LLP
50 California Street, 22nd Floor
San Francisco, CA 94111
Telephone: [phone]
Facsimile: [phone]

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By: _________________________________
Stephen E. Noona (Virginia Bar No. 25367)
KAUFMAN & CANOLES, P.C.
150 West Main Street
Post Office Box 3037
Norfolk, VA 23514
Telephone: [phone]
Facsimile: [phone]
Counsel for Defendants AOL, Inc., Google, Inc., IAC
Search & Media, Inc., Gannett Company, Inc. and
Target Corporation
By: _________________________________
Robert L. Burns
FINNEGAN, HENDERSON, FARABOW,
GARRETT & DUNNER, LLP
Two Freedom Square
11955 Freedom Drive
Reston, VA 20190
Telephone: [phone]
Facsimile: [phone]
By: _________________________________
Cortney S. Alexander
FINNEGAN, HENDERSON, FARABOW,
GARRETT & DUNNER, LLP
3500 SunTrust Plaza
303 Peachtree Street, NE
Atlanta, GA 94111
Telephone: [phone]
Facsimile: [phone]
Counsel for Defendant AOL, Inc.

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