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

Filing 229

REPLY to Response to Motion re 209 MOTION to Compel Plaintiff To Produce Documents (Public Version) filed by Google Inc.. (Noona, Stephen)

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF VIRGINIA
NORFOLK DIVISION

UP ENGINE, INC.
Plaintiff,
V.

Civil Action No. 2:11-cv-512

AOL, INC., et al.,
Defendants.

REPLY BRIEF IN SUPPORT OF GOOGLE'S MOTION TO COMPEL PLAINTIFF TO
PRODUCE DOCUMENTS
Introduction

Plaintiff fails to rebut Google's request for the relevant documents sought in its Motion to
Compel. Instead, Plaintiff hides behind "non-parties" to the litigation, even though the requested
documents are in Plaintiffs possession, custody, or control. Plaintiff also disputes the
responsiveness and relevance of categories of documents Google seeks even though they directly
relate to the patents-at-issue and this litigation. And in response to the clear evidence Google has
provided that Plaintiff has not complied with its discovery obligations, Plaintiff merely repeats
that it has complied with its discovery obligations while still refusing to provide straight answers
to Google's direct questions about its production and maintenance of documents. Google's
motion to compel should be granted.

1

I.

ARGUMENT

A.

Innovate/Proteet's Communications to Potential Investors are Within
Plaintiffs Control, Relevant, and Should be Produced.

Google seeks to compel documents provided by Innovate/Protect to potential investors
that concern the patents-in-suit and this litigation. Contrary to Plaintiffs suggestions, this
request is not limited to two documents, a form purchase agreement and compiled financial
statements. (Dkt. 223, Opposition to Google's Motion to Compel ("Opp."), 10.) MOM

Google has requested all documents sent to investors regarding the patents-in-suit and this
litigation, documents Plaintiff should have produced long ago, and without the need for a motion
to compel. (Dkt. 210, Brief in Support of Google's Motion to Compel (''MTC"), 3-4.)
In avoiding production of these documents, Plaintiff cynically seeks to hide behind the
corporate shells it has created for this litigation, stating that these documents are Innovate/Protect
documents, not I/P Engine documents. (Opp., 1, 10.) Again, I/P Engine is a wholly-owned
subsidiary of Innovate/Protect. (MTC, 3.) But aside from the corporate documents and tax
records, there is no separateness between them in their operations or the materials they possess.

(Id.) Plaintiff has not identified any separate document repositories. Indeed, Innovate/Protect

has represented in the past that it did not possess "any responsive information that is not in the
possession, custody and control of I/P Engine." (Dkt. 211-4.)
(MTC, 3.) There is simply no basis for Plaintiffs
contention that these documents are not in Plaintiffs possession, custody, or control.

2

Plaintiffs other arguments are as incredible as its first. How could documents Plaintiff
has sent to potential investors not relate to this litigation or to the patents-in-suit (Opp., 10-11),
given that Innovate/Protect and PP Engine's only business is this lawsuit? (MTC, 3-4.) And
while Plaintiff contends that the documents are not responsive to Google's requests for
production served on both VP Engine and Innovate/Protect (Opp., 11), this too is untenable.
These requests sought documents including "communications with third parties regarding the
subject matter of this Action or the patents-in-suit" and documents related to "any computation,
calculation or estimation of damages, lost profits or reasonable royalties claimed in this Action,"
"any steps Innovate/Protect, I/P Engine, or the predecessors in interest took to enforce the
patents-in-suit against any defendants or any third party," "any proposed merger, acquisition, or
sale of substantially all of the assets of Innovate/Protect, I/P Engine," "the corporate relationship
between you and I/P Engine," "the value that you, I/P Engine, or the predecessors in interest paid
to acquire the patents-in-suit," "any of Google's products, services, or methods alleged in to
infringe the patents-in-suit, including all documents referring to, regarding, or analyzing whether
Google has infringed the patents-in-suit," and "each of the legal and factual allegations and
requests for relief in I/P Engine's claims." (Dkt. 211-6, 211-7.)
B.

Donald Kosak's Consulting Agreement with Dickstein Shapiro is Within
Plaintiff's Control, Relevant, Non-Privileged, and Should be Produced.

Plaintiffs argument that it need not produce Donald Kosak's consulting agreement merely
because it is between Mr. Kosak and Dickstein Shapiro is baseless. (Opp., 8.) As a matter of
law, a party may not shield an agreement from discovery by having counsel, rather than the
party, enter the agreement. See U.S v. Under Seal (In re Grand Jury Subpoena), 204 F.3d 516,
522 (4th Cir. 2000) ("A client may not 'buy' a privilege by retaining an attorney to do something
that a non-lawyer could do just as well.") (internal quotation omitted). Furthermore, under I/P

3

Engine's own argument, this document is within its control because it was created pursuant to
Dickstein Shapiro's representation ofI/P Engine. (Opp., 4-5.)
Plaintiffs argument as to relevance fails again as well. (Opp., 9.) As Google argued in
its motion, as an inventor of the patents-in-suit, Mr. Kosak is a fact witness, and details of his
obligations and benefits under the contract are directly relevant to his credibility and bias.
(MTC, 6-7.) Nevertheless, Plaintiff argues that "the fact that the agreement exists and that [Mr.
Kosak] is a paid consultant has already been established through Mr. Kosak's own deposition
testimony," and that there is nothing "within the four corners of the agreement" that bears on Mr.
Kosak's credibility. (Opp., 9.) But given the direct relation of this agreement to this litigation,
this Court and Google should not have to simply take Plaintiffs word on this, especially given
the other positions that Plaintiff has taken on what is or is not "relevant." Google should have
the opportunity to examine the document and make this determination for itself.
The case Plaintiff relies upon is inapposite. In Synopsis, Inc. v. Ricoh Co., Ltd., 2006 WL
2458721 (N.D. Cal. Aug. 22, 2006), the court declined to compel production of a consulting
agreement because the moving party "[did] not provide any real argument as to why it is entitled
to such documents." Synopsis, 2006 WL 2458721, *2. Here, in contrast, Google has explained
in detail why this agreement bears on Mr. Kosak's credibility, with legal authority supporting its
argument. (MTC, 6-7.) Plaintiff's argument that Mr. Kosak is a consultant, father than a fact
witness, is undermined by one of the cases cited in Synopsys, Sensormatic Elecs. Corp. v. WG
Sec. Prods., 2006 U.S. Dist. LEXIS 30591 (ED. Tex. May 11, 2006), which makes clear that an
inventor of a patent-in-suit is a fact witness, not a consulting witness. Sensormatic Elecs., 2006
U.S. Dist. LEXIS 30591, *6 (holding that witness was a fact witness as inventor of patent-in-suit,
and consulting expert as analyst of defendants' source code).

4

Plaintiff also argues that the agreement is privileged under the attorney-work product
doctrine, relying on Montgomery v. Aetna Plywood, Inc., 1996 U.S. Dist. LEXIS 9213, *8 (N.D.
Ill. June 28, 1996). The court in Montgomery held that the specific agreement at issue was work
product, but the ease it relies on makes clear that a document must contain the mental
impressions of counsel in order to qualify for that protection. Rhone-Poulenc Rorer, Inc, v.
Home Indem. Co., 139 F.R.D. 609, 615 (E.D. Pa. 1991) ("The only question is whether the
mental impressions were documented ... in anticipation of litigation."). But Plaintiff does not
establish that the agreement contains or reflects the litigation strategy or the mental impressions
and opinion of counsel. (Opp., 8-9.) See State of N Y. v. Solvent Chemical Co., Inc., 166 F.R.D.
284, 290 (W.D.N.Y. 1996) ("The court is at a loss as to why [defendant] would incorporate such
sensitive information in a written contract with an important fact witness. It must have been
obvious at the time the contract was drafted that other parties to the litigation

would be likely

to seek production of the document.").
Even if the document had been privileged, that privilege has been waived because the
document does not appear on a privilege log. UP Engine argues that because Dickstein Shapiro
was not subpoenaed, no privilege was waived because there was no need for it to provide a
privilege log. (Opp., 9.) However, Mr. Kosak was subpoenaed, and he failed to log the
document on any privilege log. (O'Brien Decl. 114; Opp., 8 fn. 4.) Furthermore, the document
should have also appeared on UP Engine's privilege log, and I/P Engine's failure to log is simply
another attempt to hide behind an artificial distinction between I/P Engine and its counsel.
C.

Mr. Lang's Documents Have Been Improperly Withheld, and Plaintiff
Should Confirm They Have Been Properly Maintained.

Google moved to compel Mr. Lang's complete production in the wake of Plaintiffs
failure to provide a straight answer to the question of whether Mr. Lang's documents were being

5

improperly withheld and whether they had been properly maintained. (MTC, 8-9.) In its
opposition, Plaintiff insists that it did cooperate and answered Google's questions. (Opp. 7.)
However, the very correspondence Plaintiff points to shows that TIP Engine was ducking
Google's direct questions, responding merely that I/P Engine was "complying with its discovery
obligations." (Id.) When Google followed up to request clarification whether this meant that
Mr. Lang's documents were being properly maintained, T/P Engine simply repeated this
statement and said that it did not understand why it had to "repeatedly confirm this fact for
Defendants with respect to an individual or a company." (Id.; Dkt. 211-9.)
The reason Google requested that I/P Engine confirm the fact that Mr. Lang's documents
were being properly maintained is that Goo* discovered, based on emails produced by Mr.
Kosak that should also have been produced by Mr. Lang, that Mr. Lang's production was
incomplete. (MTC, 8-9.) Plaintiff did not volunteer this information; rather, Google realized
that the production was incomplete and had to ask Plaintiff, more than once, for an explanation.
(Dkt. 211-15.) Even now, in its opposition, Plaintiff fails to confirm that Mr. Lang's documents
have been properly maintained throughout the pendency of this litigation; instead it repeats the
statements it previously made that Plaintiff has complied with its discovery obligations. (Opp.,
7.) Given the improper withholding of Mr. Lang's documents, Plaintiff should be compelled to
confirm that Mr. Lang's documents have been properly maintained, or if not, to provide an
explanation for their destruction.
D.

Pre-Litigation Documents Related to Dickstein Shapiro's Efforts to License
or Sell the Patents are Within Plaintiff's Control, Non-Privileged, and Should
be Produced.

Plaintiff opposes Google's request for pre-litigation documents related to Dickstein
Shapiro's efforts to license or sell the patents-in-suit, arguing that these documents are Dickstein

6

Shapiro's documents. (Opp., 4-6.) This argument again is part of Plaintiffs pattern of hiding
behind a false distinction between itself and a third party, here its agent and counsel.
This argument contradicts the stance that 1/P Engine has taken throughout this litigation.
Several months ago, Plaintiff demanded the production of a variety of deposition and trial
transcripts, expert reports, motions, orders, and other documents from prior litigations involving
Google AdWords. (O'Brien Deel. 11 2.) Google explained that it would be unduly burdensome to
collect and produce all of the documents demanded by Plaintiff, many of which were in the
possession of outside counsel only. Id. Plaintiff nonetheless insisted that, despite the burden,
Google obtain certain documents from outside counsel and produce them. Id. Plaintiff argues in
its opposition that the consequence of Google's request for documents related to Dickstein
Shapiro's licensing efforts is that Plaintiff would be entitled to documents in the possession of
Google's outside counsel. (Opp., 6.) This argument is disingenuous given that Plaintiff has
insisted in the past on the production of documents in the possession of Google's outside counsel
and has, in fact, received many such documents.
I/P Engine also argues that these documents are privileged. (Opp., 6.) To the extent that
these documents were privileged, however, that privilege has been waived, because I/P Engine
failed to log them all on a privilege log. Without a privilege log, Google cannot evaluate
whether each withheld document is in fact privileged. It is clear that Dickstein Shapiro could not
have represented all of Lycos, Altitude Capital Partners, and Eidos — parties on opposite sides of
a transaction — throughout the time period in question. 1 Witness testimony confirms this. For
example, the general counsel of Lycos testified
For the same reason, Plaintiff s case law is inapplicable. Plaintiff has failed to
establish that Dickstein Shapiro represented any specific third party at the time of all of the
communications, so it cannot argue that the documents were created or collected pursuant to
Dickstein Shapiro's representation of third parties.

7

11111111

111

11111111111M As to communications between

Eidos and Dickstein Shapiro, it is unclear whether Dickstein Shapiro even represented Eidos at
the time of the communieations. 2
I/P Engine also argues that it has repeatedly confirmed that it has produced relevant, nonprivileged documents responsive to Google's document requests. (Opp., 3.) This does not
resolve the issue. First, Plaintiff has maintained that these pre-litigation documents are not
responsive to Google's document requests, even after Google pointed to the requests to which
they were responsive. (MTC, I 1-12.) Therefore, Plaintiffs statement that it has produced
responsive documents does not mean that Plaintiff has produced these pre-litigation documents.
Second, it is unclear whether documents are being withheld because Plaintiff deems them
irrelevant, which is not the standard for discovery. Plaintiffs response leaves open the question
of whether it has produced all documents in its possession, custody, or control related to
Dickstein Shapiro's pre-litigation involvement in efforts to sell the patents-in-suit, and Plaintiff
should be compelled to produce them.

IL

CONCLUSION

For the foregoing reasons, and for the reasons set forth in Google's Brief in Support of its
Motion to Compel Plaintiff to Produce Documents, Google respectfully requests that the Court
compel TIP Engine to produce the documents provided by Innovate/Protect to potential investors,
2 Plaintiff also argues that Dickstein Shapiro has not been subpoenaed to produce
documents. (Opp., 3.) However, Google should not have to subpoena opposing counsel to
obtain relevant documents in its possession. In any event, as Plaintiff admits, Google has
subpoenaed third parties Lycos, Altitude Capital Partners, and Eidos, whom it seems Dickstein
Shapiro contends it supposedly represented on multiple sides of these negotiations. (Opp., 4-6.)
Thus, this too provides no basis for Plaintiffs and its counsel's withholding of documents.

8

the consulting agreement between Dickstein Shapiro and Donald Kosak, documents related to
Dickstein Shapiro's pre-litigation involvement in efforts to sell the patents-in-suit, and the
complete production of Mr. Lang (or, to the extent that the production is complete, to confirm
that Mr. Lang's documents have been properly maintained).

DATED: September 4, 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 for Defendant GOOGLE INC.

9

CERTIFICATE OF SERVICE
1 hereby certify that on September 4, 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 (NEF) to
the following:
Jeffrey K. Sherwood
Kenneth W. Brothers
DICKSTEIN SHAPIRO LLP
1825 Eye Street NW
Washington, DC 20006
Telephone: [phone]
Facsimile: [phone]
[e-mail]
[e-mail]
Donald C. Schultz
W. Ryan Snow
Steven Stancliff
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 for Google Inc.,
Target Corporation,
IAC Search & Media, Inc., AOL Inc. and
Gannet Co., Inc.

10

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

/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]

11