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

Filing 222

Reply to Motion re 200 MOTION for Sanctions Motion for Discovery Sanctions Regarding Untimely Disclosed Prior Art filed by I/P Engine, Inc.. (Attachments: # 1 Exhibit 1, # 2 Exhibit 2, # 3 Exhibit 3, # 4 Exhibit 4, # 5 Exhibit 5, # 6 Exhibit 6)(Sherwood, Jeffrey)

Exhibit 6 

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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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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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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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: [phone]
Facsimile: [phone]
Donald C. Schultz
W. Ryan Snow
CRENSHAW, WARE & MARTIN PLC
150 West Main Street
Norfolk, VA 23510
Telephone: [phone]
Facsimile: [phone]
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
[e-mail]
David Bilsker
David Perlson
Quinn Emanuel Urquhart & Sullivan LLP
50 California Street, 22nd Floor
San Francisco, CA 94111
[e-mail]
[e-mail]
Robert L. Burns
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
Two Freedom Square
11955 Freedom Drive
Reston, VA 20190
[e-mail]
Cortney S. Alexander
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
3500 SunTrust Plaza
303 Peachtree Street, NE
Atlanta, GA 94111
[e-mail]

/s/ Charles J. Monterio, Jr.
Charles J. Monterio, Jr.

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