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 I
UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF VIRGINIA
NORFOLK DIVISION
__________________________________________
)
I/P ENGINE, INC.,
)
)
Plaintiff,
)
v.
)
Civ. Action No. 2:11-cv-512
)
AOL, INC. et al.,
)
)
Defendants.
)
__________________________________________)
PLAINTIFF I/P ENGINE, INC.’S THIRD SUPPLEMENTAL
RESPONSES AND OBJECTIONS TO
DEFENDANT GOOGLE, INC.’S FIRST SET OF INTERROGATORIES
Pursuant to Rules 26 and 33 of the Federal Rules of Civil Procedure, and the agreements
of the parties, I/P Engine, Inc. (“I/P Engine”) hereby supplements its responses and objections to
Google, Inc.’s (“Google”) First Set of Interrogatories (“Interrogatories”). These responses are
based on information reasonably available to I/P Engine at the present time. I/P Engine reserves
the right to further supplement these responses when, and if, additional information becomes
available. I/P Engine also reserves the right to object on any ground at any time to such other or
supplemental Interrogatories Google may propound involving or relating to the subject matter of
these Interrogatories.
GENERAL OBJECTIONS
I/P Engine incorporates herein each of the general objections included in its Responses
and Objections to Defendant Google, Inc.’s First Set of Interrogatories as if fully set forth herein.
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RESPONSES AND SPECIFIC OBJECTIONS
Statements made herein regarding I/P Engine’s intention to provide information or
documents responsive to any given Interrogatory do not necessarily indicate or imply the
existence of any information or documents responsive thereto. Furthermore, any information
provided or referred to herein is not deemed to be a waiver of I/P Engine’s objections as to the
authenticity, competency, relevancy, materiality, privilege or admissibility of evidence in this or
any subsequent proceeding or trial in this or any other action for any purpose whatsoever. In
addition, I/P Engine reserves the right to further supplement or amend its responses to the
Interrogatories based upon information, documents, and things it receives during discovery or
obtains upon further investigation, and pursuant to the Court’s Order, dated May 2, 2012.
Discovery and trial preparation in this matter have not been completed. I/P Engine is
continuing its investigation to obtain information responsive to the Interrogatories. Therefore, all
responses will be given without prejudice to I/P Engine’s right to introduce documents or
information discovered or deemed responsive subsequent to the date of these responses.
In gathering relevant and responsive information, I/P Engine has interpreted the
Interrogatories utilizing ordinary meanings of words and has expended reasonable efforts to
identify information that appears responsive. To the extent that the Interrogatories purport to
seek information other than as so interpreted, I/P Engine objects on the ground that the
Interrogatories are vague, ambiguous and overbroad.
I/P Engine’s responses to the Interrogatories are without waiver or limitation of I/P
Engine’s right to object on the grounds of authenticity, competency, relevancy, materiality,
privilege, admissibility as evidence for any purpose, or any other grounds to the use of any
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documents or information in any subsequent proceeding in, or the trial of, this or any other
action.
I/P Engine’s production, if any, of third party documents related to this litigation does not
waive or limit I/P Engine’s, or any other party’s, right to object on the grounds of authenticity,
competency, relevancy, materiality, privilege, admissibility as evidence for any purpose, or any
other grounds to the use of any documents or information in any subsequent proceeding in, or the
trial of, this or any other action. I/P Engine’s producing of such documents also does not
constitute an admission or representation that the information contained within the documents is
known or reasonably available to I/P Engine. Additionally, I/P Engine does not have a legal
right to obtain or demand further documents from any third party, or have an established
relationship with any third party.
INTERROGATORIES
INTERROGATORY NO. 1:
For each asserted claim of the PATENTS-IN-SUIT, describe in detail all facts
RELATING TO its conception and reduction to practice, including but not limited to:
IDENTIFYING the date of conception, the date of reduction to practice of its subject matter, all
acts YOU contend represent diligence occurring between the dates of conception and reduction
to practice, each person involved in such conception, diligence and/or reduction to practice,
where the invention was first reduced to practice, when, where, and to whom the invention was
first disclosed, and IDENTIFYING each person, including third parties, who worked on the
development of the alleged invention(s) described and claimed in the PATENTS-IN-SUIT,
describing each person’s role (e.g., producer, developer, tester, technician, researcher, etc.), the
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dates and places each such person assisted, supervised, or was otherwise so involved, and the
identity of all documents evidencing conception, diligence and reduction to practice.
RESPONSE:
Plaintiff incorporates its general objections and specific objections. I/P Engine further
objects to this Interrogatory to the extent it seeks information that is protected by the attorneyclient privilege, the work product doctrine, Rule 26(b)(4)(B) immunity, or any other applicable
privilege or immunity. Subject to and without waiving its foregoing objections, I/P Engine
responds:
I/P Engine, under Rule 33(d) of the Federal Rules of Civil Procedure, will produce
documents from which information responsive to this Interrogatory may be derived or
ascertained.
FIRST SUPPLEMENTAL RESPONSE:
Plaintiff incorporates its general objections and specific objections. I/P Engine further
objects to this Interrogatory to the extent it seeks information that is protected by the attorneyclient privilege, the work product doctrine, Rule 26(b)(4)(B) immunity, or any other applicable
privilege or immunity. Subject to and without waiving its foregoing objections, I/P Engine
responds:
I/P Engine, and third parties, have produced documents from which information
responsive to this Interrogatory may be derived or ascertained pursuant to Rule 33(d) of the
Federal Rules of Civil Procedure. See IPEL0000302-305; IPEL0000308-314; IPEL0000326329; IPEL0000418-425; IPEL0000606-608; IPEL0000675-683; IPEL0001062-1063;
IPEL0001212-1242; IPEL0001270-1273; IPEL0001326-1334; IPEL0001395-1399;
IPEL0001422-1424; IPEL0001467-1482; IPEL0001557-1561; IPEL0001717-1732;
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IPEL0001924-1926; IPEL0001956-1960; LANG0001048-1051; LANG0001317-1339;
LANG0001473-1479; LANG0006083-6097; LANG0007021-7028; IPE0000916-2504.
SECOND SUPPLEMENTAL RESPONSE:
Plaintiff incorporates its general objections and specific objections. I/P Engine further
objects to this Interrogatory to the extent it seeks information that is protected by the attorneyclient privilege, the work product doctrine, Rule 26(b)(4)(B) immunity, or any other applicable
privilege or immunity. Subject to and without waiving its foregoing objections, I/P Engine
responds:
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 patent). I/P Engine
has no present contention as to when, where, and to whom the invention was first disclosed, nor
any present contention as to acts that represent diligence between any date of conception and
reduction to practice.
To the extent that it may be determined by I/P Engine, the individuals involved with
conception, reduction to practice, and/or development are Ken Lang and Don Kosak, who are the
two named inventors.
THIRD SUPPLEMENTAL RESPONSE:
Plaintiff incorporates its general objections and specific objections. I/P Engine further
objects to this Interrogatory to the extent it seeks information that is protected by the attorneyclient privilege, the work product doctrine, Rule 26(b)(4)(B) immunity, or any other applicable
privilege or immunity. Subject to and without waiving its foregoing objections, I/P Engine
responds:
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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 patent).
After a reasonable investigation of available information including a review of the
documents identified in Plaintiff’s 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.
To the extent that it may be determined by I/P Engine, the individuals involved with
conception, reduction to practice, and/or development are Ken Lang and Don Kosak, who are the
two named inventors.
INTERROGATORY NO. 2:
IDENTIFY all patents, patent applications, publications, web sites, products, services,
and methods, that predate November 19, 1998 and RELATE TO filtering information through
content-based and collaborative filters1 that were at any time known to PLAINTIFF, LYCOS,
WISEWIRE, any of the named inventors of the PATENTS-IN-SUIT, or anyone participating in
the prosecution of the PATENTS-IN-SUIT or the agents of any of the foregoing, and when they
became known.
RESPONSE:
Plaintiff incorporates its general objections and specific objections. I/P Engine objects to
this Interrogatory to the extent it seeks information that is protected by the attorney-client
1
For avoidance of doubt, a patent, patent application, publication, web site, product, service, or
method falls within the scope of Interrogatory No. 2 only if it employs at least one content-based
filter and at least one collaborative filter.
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privilege, the work product doctrine, Rule 26(b)(4)(B) immunity, or any other applicable
privilege or immunity. I/P Engine also objects to this Interrogatory to the extent that it seeks
information not in I/P Engine’s possession, custody or control. I/P Engine objects to the phrase
“one content-based filter and at least one collaborative filter” in this Interrogatory as vague and
unascertainable. Subject to and without waiving its foregoing objections, I/P Engine responds:
I/P Engine, under Rule 33(d) of the Federal Rules of Civil Procedure, will produce
documents from which information responsive to this Interrogatory may be derived or
ascertained.
FIRST SUPPLEMENTAL RESPONSE:
Plaintiff incorporates its general objections and specific objections. I/P Engine objects to
this Interrogatory to the extent it seeks information that is protected by the attorney-client
privilege, the work product doctrine, Rule 26(b)(4)(B) immunity, or any other applicable
privilege or immunity. I/P Engine also objects to this Interrogatory to the extent that it seeks
information not in I/P Engine’s possession, custody or control. I/P Engine objects to the phrase
“one content-based filter and at least one collaborative filter” in this Interrogatory as vague and
unascertainable. Subject to and without waiving its foregoing objections, I/P Engine responds:
I/P Engine is not aware of any patents, patent applications, publications, web sites,
products, services or methods that anticipate or render obvious the claimed inventions of the
patents-in-suit and predate November 19, 1998. I/P Engine is not aware of any patents, patent
applications, publications, web sites, products, services or methods that relate to filtering
information through at least one content-based filter and at least one collaborative filter as
described in the patents-in-suit and predate November 19, 1998, except for U.S. Patent No.
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5,867,799 to Lang et al., U.S. Patent No. 5,983,214 to Lang et al., U.S. Patent No. 6,029,161 to
Lang et al., and U.S. Patent No. 6,308,175 to Lang et al.
Further responding, I/P Engine identifies certain patents and publications that other
parties have asserted relate to filtering information through at least one content-based filter and at
least one collaborative filter and predate November 19, 1998. I/P Engine has received, in a
Lycos third party production sent to I/P Engine by Google on December 22, 2011, a letter related
to settlement discussions in a prior litigation in which defendant’s counsel in that prior litigation
asserted that U.S. Patent No. 5,724,567 to Rose et al., U.S. Patent No. 5,758,257 to Herz et al.,
and U.S. Patent No. 5,754,939 to Herz et al. included filtering information through at least one
content-based filter and at least one collaborative filter. I/P Engine has also received on January
24, 2012 in the current litigation Google’s invalidity contentions, in which Google has asserted
that the following references relate to “the concept of combining collaborative and content-based
filters”:
Marko Balabanovic et al., Fab: Content-Based, Collaborative Recommendation,
Communications of the ACM (March 1997);
U.S. Patent No. 6,202,058 to Rose et al.;
Yezdezard Lashkari, Feature Guided Automated Collaborative Filtering, MIT Masters
Thesis (1995);
U.S. Patent No. 5,835,087 to Herz et al.;
David Goldberg et al., Using Collaborative Filtering to Weave an Information Tapestry,
Communications of the ACM (December 1992).
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INTERROGATORY NO. 3:
Identify each secondary consideration PLAINTIFF will rely on to rebut a claim of
obviousness and describe in detail why each secondary consideration demonstrates nonobviousness, and identify all documents and evidence that support any such theory.
RESPONSE:
Plaintiff incorporates its general objections and specific objections. I/P Engine objects to
this Interrogatory to the extent it seeks information that is protected by the attorney-client
privilege, the work product doctrine, Rule 26(b)(4)(B) immunity, or any other applicable
privilege or immunity. I/P Engine further objects to this Interrogatory as premature because it
seeks evidence of non-obviousness before Google has identified its obviousness claims and the
bases therefore. I/P Engine further objects to this Interrogatory as premature to the extent that it
seeks expert opinion evidence, which will be provided in accordance with the Federal Rules of
Civil Procedure, the Local Rules of the Court, or the Court’s scheduling orders, or anything other
than I/P Engine’s present contentions, which are subject to development as discovery proceeds.
INTERROGATORY NO. 4:
Identify the level of skill of a person of ordinary skill in the art of the subject matter of
the PATENTS-IN-SUIT as of their respective filing dates.
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RESPONSE:
Plaintiff incorporates its general objections and specific objections. I/P Engine objects to
this Interrogatory to the extent it seeks information that is protected by the attorney-client
privilege, the work product doctrine, Rule 26(b)(4)(B) immunity, or any other applicable
privilege or immunity. I/P Engine further objects to this Interrogatory as premature to the extent
that it seeks expert opinion evidence, which will be provided in accordance with the Federal
Rules of Civil Procedure, the Local Rules of the Court, or the Court’s scheduling orders, or
anything other than I/P Engine’s present contentions, which are subject to development as
discovery proceeds.
INTERROGATORY NO. 5:
Identify any product or software known to YOU that practices or practiced any claim of
the PATENTS-IN-SUIT, or that YOU allege to be an embodiment of any invention claimed in
the PATENTS-IN-SUIT, including without limitation products or software designed,
programmed, owned, marketed, sold or licensed by PLAINTIFF, LYCOS, or WISEWIRE.
RESPONSE:
Plaintiff incorporates its general objections and specific objections. I/P Engine objects to
this Interrogatory to the extent it seeks information that is protected by the attorney-client
privilege, the work product doctrine, Rule 26(b)(4)(B) immunity, or any other applicable
privilege or immunity. I/P Engine also objects to this Interrogatory to the extent that it seeks
information not in I/P Engine’s possession, custody or control. Subject to and without waiving
the foregoing objections, I/P Engine responds:
Defendant Google, Inc.’s products, methods and systems promoted under the names of
Google AdWords, Google AdSense for Search, and Google Search. I/P Engine served its
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Preliminary Disclosures of Asserted Claims and Pre-Discovery Infringement Contentions as to
Google, Inc. on November 7, 2011. I/P Engine hereby incorporates those Disclosures by
reference and submits that its response to this Interrogatory may be derived from those
disclosures. I/P Engine’s pre-discovery contentions were based on known publicly available
information, and are subject to change based on the Court’s claim construction, discovery,
additional evidence, and/or further investigation. I/P Engine reserves the right to amend and/or
supplement its infringement contentions if and when further information becomes available.
Defendant IAC Search & Media, Inc.’s products, methods and systems promoted under
the name of Ask.com Sponsored Listings, and its systems using Google, Inc.’s products, methods
and systems promoted under the names of Google AdWords and Google AdSense for Search.
I/P Engine served its Preliminary Disclosures of Asserted Claims and Pre-Discovery
Infringement Contentions as to IAC Search & Media, Inc. on November 11, 2011. I/P Engine
hereby incorporates those Disclosures by reference and submits that its response to this
Interrogatory may be derived from those disclosures. I/P Engine’s pre-discovery contentions
were based on known publicly available information, and are subject to change based on the
Court’s claim construction, discovery, additional evidence, and/or further investigation. I/P
Engine reserves the right to amend and/or supplement its infringement contentions if and when
further information becomes available.
Defendant AOL, Inc.’s products, methods and systems promoted under the name AOL’s
Advertising.com Sponsored Listings, products, methods and systems promoted under the phrase
AOL’s white-label, modified version of Google AdWords, and its systems using Google, Inc.’s
products, methods and systems promoted under the names of Google AdWords and Google
AdSense for Search. I/P Engine served its Preliminary Disclosures of Asserted Claims and Pre-
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Discovery Infringement Contentions as to AOL, Inc. on November 11, 2011. I/P Engine hereby
incorporates those Disclosures by reference and submits that its response to this Interrogatory
may be derived from those disclosures. I/P Engine’s pre-discovery contentions were based on
known publicly available information, and are subject to change based on the Court’s claim
construction, discovery, additional evidence, and/or further investigation. I/P Engine reserves
the right to amend and/or supplement its infringement contentions if and when further
information becomes available.
Defendant Target Corporation’s systems using Google, Inc.’s products, methods and
systems promoted under the names of Google AdWords and Google AdSense for Search. I/P
Engine served its Preliminary Disclosures of Asserted Claims and Pre-Discovery Infringement
Contentions as to Target Corporation on November 11, 2011. I/P Engine hereby incorporates
those Disclosures by reference and submits that its response to this Interrogatory may be derived
from those disclosures. I/P Engine’s pre-discovery contentions were based on known publicly
available information, and are subject to change based on the Court’s claim construction,
discovery, additional evidence, and/or further investigation. I/P Engine reserves the right to
amend and/or supplement its infringement contentions if and when further information becomes
available.
Defendant Gannett Company, Inc.’s systems using Google, Inc.’s products, methods and
systems promoted under the names of Google AdWords and Google AdSense for Search. I/P
Engine served its Preliminary Disclosures of Asserted Claims and Pre-Discovery Infringement
Contentions as to Gannett Company, Inc. on November 11, 2011. I/P Engine hereby
incorporates those Disclosures by reference and submits that its response to this Interrogatory
may be derived from those disclosures. I/P Engine’s pre-discovery contentions were based on
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known publicly available information, and are subject to change based on the Court’s claim
construction, discovery, additional evidence, and/or further investigation. I/P Engine reserves
the right to amend and/or supplement its infringement contentions if and when further
information becomes available.
INTERROGATORY NO. 6:
Describe in detail all efforts to mark any product authorized or licensed under the
PATENTS-IN-SUIT with the patent number of the PATENTS-IN-SUIT, including
IDENTIFYING the beginning and end dates of any such patent marking (including the
beginning or end dates of any interruption in patent marking), the seller of such marked products,
and the manner of marking for each marked product, such as the location of the patent marking
and/or the manner of such patent marking.
RESPONSE:
Plaintiff incorporates its general objections and specific objections. I/P Engine objects to
this Interrogatory to the extent it seeks information that is protected by the attorney-client
privilege, the work product doctrine, Rule 26(b)(4)(B) immunity, or any other applicable
privilege or immunity. I/P Engine also objects to this Interrogatory to the extent that it seeks
information not in I/P Engine’s possession, custody or control. Subject to and without waiving
its foregoing objections, I/P Engine responds:
I/P Engine, under Rule 33(d) of the Federal Rules of Civil Procedure, will produce
documents from which information responsive to this Interrogatory may be derived or
ascertained.
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FIRST SUPPLEMENTAL RESPONSE:
Plaintiff incorporates its general objections and specific objections. I/P Engine objects to
this Interrogatory to the extent it seeks information that is protected by the attorney-client
privilege, the work product doctrine, Rule 26(b)(4)(B) immunity, or any other applicable
privilege or immunity. I/P Engine also objects to this Interrogatory to the extent that it seeks
information not in I/P Engine’s possession, custody or control. Subject to and without waiving
its foregoing objections, I/P Engine responds:
I/P Engine has produced documents from which information responsive to this
Interrogatory may be derived or ascertained under Rule 33(d) of the Federal Rules of Civil
Procedure. See IPE0002511-2523.
INTERROGATORY NO. 7:
For each claim of the PATENTS-IN-SUIT you contend is infringed, identify every one of
GOOGLE’s products that you allege infringes each such claim, provided a detailed explanation,
with all evidence and reasons, how each product meets each element of every claim, whether
such alleged infringement is literal or by equivalents, an explanation of how
35 U.S.C. § 112 ¶ 6 is satisfied for any element you contend is drafted in means plus function
form, including without limitation identification of corresponding structures in the patent
specification and the ACCUSED PRODUCTS and an explanation of how they are the same or
equivalent; an explanation of whether such alleged infringement is direct (i.e., under
35 U.S.C. § 271(a)) or indirect (i.e., under 35 U.S.C. §§ 271 (b) and (c)); and if indirect, an
identification of each third party whose alleged infringement is direct, and identify all documents
and evidence supporting any such contentions.
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RESPONSE:
Plaintiff incorporates its general objections and specific objections. I/P Engine objects to
this Interrogatory to the extent it seeks information that is protected by the attorney-client
privilege, the work product doctrine, Rule 26(b)(4)(B) immunity, or any other applicable
privilege or immunity. I/P Engine further objects to this Interrogatory as premature to the extent
that it seeks expert opinion evidence, which will be provided in accordance with the Federal
Rules of Civil Procedure, the Local Rules of the Court, or the Court’s scheduling orders. Subject
to and without waiving the foregoing objections, I/P Engine responds:
I/P Engine served its Preliminary Disclosures of Asserted Claims and Pre-Discovery
Infringement Contentions as to Google, Inc. on November 7, 2011. I/P Engine hereby
incorporates those Disclosures by reference and submits that its response to this Interrogatory
may be derived from those disclosures. I/P Engine’s pre-discovery contentions were based on
known publicly available information, and are subject to change based on the Court’s claim
construction, discovery, additional evidence, and/or further investigation. I/P Engine reserves
the right to amend and/or supplement its infringement contentions if and when further
information becomes available. I/P Engine further states that, pursuant to the agreement of the
parties, I/P Engine will supplement its preliminary infringement contentions on February 17,
2012.
INTERROGATORY NO. 8:
If you contend that you are entitled to any monetary recovery as a result of alleged
INFRINGEMENT of the PATENTS-IN-SUIT by GOOGLE, state whether you contend that you
are entitled to lost profits or a reasonable royalty, and state all facts, evidence, and reasons upon
which you rely in support of your contention, such that if you contend you are entitled to an
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award of lost profits damages, you identify each of your products you allege falls within the
scope of any claim of the PATENTS-IN-SUIT and state the total sales annually in units and
dollars from its introduction to the present, and if you contend you are entitled to an award of
reasonable royalty damages, state what you assert to be a reasonable royalty to be paid by
GOOGLE under 35 U.S.C. Section 284, including the complete factual bases on which you base
your calculation of such royalty rate.
RESPONSE:
Plaintiff incorporates its general objections and specific objections. I/P Engine objects to
this Interrogatory to the extent it seeks information that is protected by the attorney-client
privilege, the work product doctrine, Rule 26(b)(4)(B) immunity, or any other applicable
privilege or immunity. I/P Engine further objects to this Interrogatory as premature because
discovery in this matter has just begun, and further to the extent that it seeks expert opinion
evidence, which will be provided in accordance with the Federal Rules of Civil Procedure, the
Local Rules of the Court, or the Court’s scheduling orders. Subject to and without waiving the
foregoing objections, I/P Engine responds:
I/P Engine seeks compensatory damages, past and future, amounting to no less than
reasonable royalties and prejudgment interest to compensate it for Google’s infringement.
INTERROGATORY NO. 9:
For each of the PATENTS-IN-SUIT state the priority date PLAINTIFF claims for each
claim and identify the portion(s) of the specification in any earlier application that support that
priority date.
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RESPONSE:
Plaintiff incorporates its general objections and specific objections. I/P Engine objects to
this Interrogatory to the extent it seeks information that is protected by the attorney-client
privilege, the work product doctrine, Rule 26(b)(4)(B) immunity, or any other applicable
privilege or immunity. I/P Engine objects to this Interrogatory to the extent it seeks a legal
conclusion. Subject to and without waiving its foregoing objections, I/P Engine responds:
Each of the asserted claims of the patents-in-suit are entitled to a priority date at least as
early as 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 patent).
Additionally, each of the asserted claims of the patents-in-suit may be entitled to an earlier
effective date based on, without limitation, the filing of earlier related patent applications.
FIRST SUPPLEMENTAL RESPONSE:
Plaintiff incorporates its general objections and specific objections. I/P Engine objects to
this Interrogatory to the extent it seeks information that is protected by the attorney-client
privilege, the work product doctrine, Rule 26(b)(4)(B) immunity, or any other applicable
privilege or immunity. I/P Engine objects to this Interrogatory to the extent it seeks a legal
conclusion. Subject to and without waiving its foregoing objections, I/P Engine responds:
Each of the asserted claims of the patents-in-suit are entitled to a priority date at least as
early as 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 patent).
Additionally, each of the asserted claims of the patents-in-suit may be entitled to an earlier
effective date based on, without limitation, the filing of earlier related patent applications and
documents produced by third parties. I/P Engine and third parties have produced documents
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from which information responsive to this Interrogatory may be derived or ascertained pursuant
to Rule 33(d) of the Federal Rules of Civil Procedure. See IPEL0000302-305; IPEL0000308314; IPEL0000326-329; IPEL0000418-425; IPEL0000606-608; IPEL0000675-683;
IPEL0001062-1063; IPEL0001212-1242; IPEL0001270-1273; IPEL0001326-1334;
IPEL0001395-1399; IPEL0001422-1424; IPEL0001467-1482; IPEL0001557-1561;
IPEL0001717-1732; IPEL0001924-1926; IPEL0001956-1960; LANG0001048-1051;
LANG0001317-1339; LANG0001473-1479; LANG0006083-6097; LANG0007021-7028;
IPE0000916-2504.
SECOND SUPPLEMENTAL RESPONSE:
Plaintiff incorporates its general objections and specific objections. I/P Engine objects to
this Interrogatory to the extent it seeks information that is protected by the attorney-client
privilege, the work product doctrine, Rule 26(b)(4)(B) immunity, or any other applicable
privilege or immunity. I/P Engine objects to this Interrogatory to the extent it seeks a legal
conclusion. Subject to and without waiving its foregoing objections, I/P Engine responds:
Each 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).
INTERROGATORY NO. 10:
IDENTIFY and describe in detail all the manners or techniques by which the PATENTSIN-SUIT improved upon the PRIOR ART, added functionality that did not exist in the PRIOR
ART, or provided a variation on or upgrade of the PRIOR ART, and for each such claimed
improvement, added functionality, or variation or upgrade, state whether PLAINTIFF contends it
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was a non-obvious or unpredictable improvement, addition of functionality, variation or upgrade
and why.
RESPONSE:
Plaintiff incorporates its general objections and specific objections. I/P Engine objects to
this Interrogatory to the extent it seeks information that is protected by the attorney-client
privilege, the work product doctrine, Rule 26(b)(4)(B) immunity, or any other applicable
privilege or immunity. I/P Engine further objects to this Interrogatory as premature to the extent
that it seeks expert opinion evidence, which will be provided in accordance with the Federal
Rules of Civil Procedure, the Local Rules of the Court, or the Court’s scheduling orders. Subject
to and without waiving its foregoing objections, I/P Engine responds:
I/P Engine, under Rule 33(d) of the Federal Rules of Civil Procedure, will produce
documents from which information responsive to this Interrogatory may be derived or
ascertained.
FIRST SUPPLEMENTAL RESPONSE:
Plaintiff incorporates its general objections and specific objections. I/P Engine objects to
this Interrogatory to the extent it seeks information that is protected by the attorney-client
privilege, the work product doctrine, Rule 26(b)(4)(B) immunity, or any other applicable
privilege or immunity. I/P Engine further objects to this Interrogatory as premature to the extent
that it seeks expert opinion evidence, which will be provided in accordance with the Federal
Rules of Civil Procedure, the Local Rules of the Court, or the Court’s scheduling orders. Subject
to and without waiving its foregoing objections, I/P Engine responds:
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DSMDB-3076113
I/P Engine has produced documents from which information responsive to this
Interrogatory may be derived or ascertained pursuant to Rule 33(d) of the Federal Rules of Civil
Procedure. See IPE0000916-2504.
INTERROGATORY NO. 11:
IDENTIFY any and all persons to whom you, any owner, any assignee, and/or any
exclusive licensee of the PATENTS-IN-SUIT have ever licensed, offered to license, or granted
any rights under the PATENTS-IN-SUIT, or persons who have requested to license the
PATENTS-IN-SUIT, and identify all DOCUMENTS related to any such license, offer, request,
or other grant of rights.
RESPONSE:
Plaintiff incorporates its general objections and specific objections. I/P Engine objects to
this Interrogatory to the extent it seeks information that is protected by the attorney-client
privilege, the work product doctrine, Rule 26(b)(4)(B) immunity, or any other applicable
privilege or immunity. I/P Engine further objects to this Interrogatory to the extent that it seeks
information not in I/P Engine’s possession, custody or control. Subject to and without waiving
the foregoing objections, I/P Engine responds:
I/P Engine, under Rule 33(d) of the Federal Rules of Civil Procedure, will produce
documents from which information responsive to this Interrogatory may be derived or
ascertained.
FIRST SUPPLEMENTAL RESPONSE:
Plaintiff incorporates its general objections and specific objections. I/P Engine objects to
this Interrogatory to the extent it seeks information that is protected by the attorney-client
privilege, the work product doctrine, Rule 26(b)(4)(B) immunity, or any other applicable
20
DSMDB-3076113
privilege or immunity. I/P Engine further objects to this Interrogatory to the extent that it seeks
information not in I/P Engine’s possession, custody or control. Subject to and without waiving
the foregoing objections, I/P Engine responds:
I/P Engine and/or third parties have produced documents from which information
responsive to this Interrogatory may be derived or ascertained pursuant to Rule 33(d) of the
Federal Rules of Civil Procedure. See LYCOS0000103-119.
Dated: July 2, 2012
By:
/s/ Charles J. Monterio, Jr.
Jeffrey K. Sherwood
Frank C. Cimino, Jr.
Kenneth W. Brothers
Dawn Rudenko Albert
Charles J. Monterio, Jr.
DICKSTEIN SHAPIRO LLP
1825 Eye Street, NW
Washington, DC 20006
Telephone: (202) 420-2200
Facsimile: (202) 420-2201
Donald C. Schultz
W. Ryan Snow
CRENSHAW, WARE & MARTIN PLC
150 West Main Street
Norfolk, VA 23510
Telephone: (757) 623-3000
Facsimile: (757) 623-5735
Counsel for Plaintiff I/P Engine, Inc.
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CERTIFICATE OF SERVICE
I hereby certify that on this 2nd day of July, 2012, the foregoing PLAINTIFF I/P
ENGINE, INC.’S THIRD SUPPLEMENTAL RESPONSES AND OBJECTIONS TO
DEFENDANT GOOGLE, INC.’S FIRST SET OF INTERROGATORIES, was served via
email, on the following:
Stephen Edward Noona
Kaufman & Canoles, P.C.
150 W Main St
Suite 2100
Norfolk, VA 23510
senoona@kaufcan.com
David Bilsker
David Perlson
Quinn Emanuel Urquhart & Sullivan LLP
50 California Street, 22nd Floor
San Francisco, CA 94111
davidbilsker@quinnemanuel.com
davidperlson@quinnemanuel.com
Robert L. Burns
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
Two Freedom Square
11955 Freedom Drive
Reston, VA 20190
robert.burns@finnegan.com
Cortney S. Alexander
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
3500 SunTrust Plaza
303 Peachtree Street, NE
Atlanta, GA 94111
cortney.alexander@finnegan.com
/s/ Charles J. Monterio, Jr.
Charles J. Monterio, Jr.
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DSMDB-3076113
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