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

Filing 240

Declaration re 238 Memorandum in Support, of Howard Chen in Support of Defendants' Motion for Summary Judgment by AOL Inc., Gannett Company, Inc., Google Inc., IAC Search & Media, Inc., Target Corporation. (Attachments: # 1 Exhibit 1, # 2 Exhibit 2, # 3 Exhibit 3, # 4 Exhibit 4, # 5 Exhibit 5, # 6 Exhibit 6, # 7 Exhibit 7, # 8 Exhibit 8, # 9 Exhibit 9, # 10 Exhibit 10, # 11 Exhibit 11, # 12 Exhibit 12, # 13 Exhibit 13, # 14 Exhibit 14, # 15 Exhibit 15, # 16 Exhibit 16)(Noona, Stephen)

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF VIRGINIA
NORFOLK DIVISION

I/P ENGINE, NC.
Plaintiff,
V.

Civil Action No. 2:1 1-cv-512

AOL, INC., et al.,
Defendants.

DECLARATION OF HOWARD CHEN IN SUPPORT OF DEFENDANT'S MOTION
FOR SUMMARY JUDGMENT
I, Howard Chen, declare as follows:
1.

I am an attorney in the law firm of Quinn Emanuel Urquhart & Sullivan, LLP and am

counsel for Defendant Google Inc. ("Google") in the above-captioned case. I provide this
declaration upon personal knowledge and, if called upon as a witness, would testify competently
as to the matters recited herein.
2.

Attached hereto as Exhibit 1 is a true and correct copy of U.S. Patent No. 6,314,420

produced with control numbers IPE 0002452 through IPE 0002477.
3.

Attached hereto as Exhibit 2 is a true and correct copy of U.S. Patent No. 6,185,558

produced with control numbers G-IPE-0888072 through G-IPE-0888091.

4.

Attached hereto as Exhibit 3 is a true and correct copy of U.S. Patent No. 6,006,222

produced with control numbers G-IPE-0888092 through G-IPE-0888106.
5.

Attached hereto as Exhibit 4 is a true and correct copy of the Expert Report of Ophir

Frieder on Infringement of U.S. Patent Nos. 6,314,420 and 6,775,664 served July 25, 2012.
6.

Attached hereto as Exhibit 5 is a true and correct copy of Exhibit 5 to Ophir Frieder's July

25, 2012 expert report on infringement.
7.

Attached hereto as Exhibit 6 is a true and correct copy of the Updated Expert Report of

Ophir Frieder on Infringement of U.S. Patent Nos. 6,314,420 and 6,775,664 served September 4,
2012.
8.

Attached hereto as Exhibit 7 is a true and correct copy of Exhibit 1 to Ophir Frieder's

September 4, 2012 updated expert report on infringement.
9.

Attached hereto as Exhibit 8 is a true and correct copy of Exhibit 2 to Ophir Frieder's

September 4, 2012 updated expert report on infringement.
10.

Attached hereto as Exhibit 9 is a true and correct copy of a Google internal document

titled "Ad System Overview," dated July 2004 and produced with control numbers G-IPE0009726 through G-IPE-0009750.
11.

Attached hereto as Exhibit 10 is a true and correct copy of a July 18, 2005 posting to the

Google Inside AdWords web pages titled, "Answers to Your Keyword State Questions,"
produced with control numbers G-IPE-0888219 through G-IPE-0888220.
12.

Attached hereto as Exhibit 11 is a true and correct copy of an August 19, 2005 posting to

the Google Inside AdWords web pages titled, "Answers to Your New Keyword State
Questions," produced with control numbers G-IPE-0888221 through G-IPE-0888222.

13.

Attached hereto as Exhibit 12 is a true and correct copy of a January 27, 1999 article

appearing on the website www.pcworld.com titled, "Direct Hit Tools Help Surfers Search
Smarter," by Glenn McDonald produced with control numbers G-IPE-0888223 through G-IPE0888226.
14.

Attached hereto as Exhibit 13 is a true and correct copy of a July 15, 2005 article

appearing on the website www.seobook.com titled, "Google AdWords to Drop On Hold & In
Trial Status," by Aaron Wall produced with control numbers G-IPE-0888245 through G-IPE0888248.
15.

Attached hereto as Exhibit 14 is a true and correct copy of a July 14, 2005 article

appearing on the website searchenginewatch.com titled, "Google Simplifies & Loosens
Requirements for AdWords," by Chris Sherman produced with control numbers G-IPE-0888266
through G-IPE-088874.
16.

Attached hereto as Exhibit 15 is a true and correct copy of a writing appearing on the

Google History Browser web pages titled, "What are the AdWords Keyword Status Changes,"
produced with the control number G-IPE-0888275.
17.

Attached hereto as Exhibit 16 is a true and correct copy of a September 30, 2003 article

appearing on the website www.internetnews.com titled, "Lycos Goes Contextual with Google,"
by Brian Morrissey produced with the control number G-IPE-0888276.
18.

Attached hereto as Exhibit 17 is a true and correct copy of a July 20, 2005 article

appearing on the website www.searchengineguide.com titled, "Optimizing for Google AdWords'
New Quality Score System," by Jennifer Laycock produced with control numbers G-IPE0888278 through G-IPE-0888282.

19.

Attached hereto as Exhibit 18 is a true and correct copy of a July 14, 2005 posting to the

Google Inside AdWords web pages titled, "The Next Generation of Keyword Evaluation,"
produced with control numbers G-IPE-0888286 through G-IPE-0888287.
20.

Attached hereto as Exhibit 19 is a true and correct copy of the Rebuttal Expert Report of

Dr. Jaime Carbonell Regarding Validity of U.S. Patent Nos. 6,314,420 and 6,775,664 served
August 30, 2012.
21.

Attached hereto as Exhibit 20 is a true and correct copy of Plaintiff I/P Engine, Inc.'s

Preliminary Disclosure of Asserted Claims and Pre-Discovery Infringement Contentions as to
Google AdWords and Google AdSense for Search served November 7, 2011.
22.

Attached hereto as Exhibit 21 is a true and correct copy of Plaintiff I/P Engine, Inc.'s

Second Preliminary Disclosure of Asserted Claims and Infringement Contentions as to Google
AdWords and Google AdSense for Search served February 17, 2012.
23.

Attached hereto as Exhibit 22 is a true and correct copy of Plaintiff I/P Engine, Inc.'s

Third Preliminary Disclosure of Asserted Claims and Infringement Contentions as to Google
AdWords and Google AdSense for Search served July 2, 2012.
24.

Attached hereto as Exhibit 23 is a true and correct copy of Plaintiff I/P Engine, Inc.'s

Fifth Supplemental Responses and Objections to Defendant Google, Inc.'s First Set of
Interrogatories served September 4, 2012.
25.

Attached hereto as Exhibit 24 is a true and correct copy of U.S. Patent No. 6,775,664

produced with control numbers IPE 0002478 through IPE 0002504.
26.

Attached hereto as Exhibit 25 is a true and correct copy of an internal Google document

titled, "Smart Ad Selection System (SmartASS)," dated October 30, 2003 by Eric Bauer et al.,
produced with control number G-IPE-0002076 through G-IPE-0002080.

27.

Attached hereto as Exhibit 26 is a true and correct copy of excerpts from the August 3,

2012 deposition of Bartholomew Furrow.
28.

Attached hereto as Exhibit 27 is a true and correct copy of excerpts from the June 21,

2012 deposition of Jonathan Alferness.
29.

Attached hereto as Exhibit 28 is a true and correct copy of excerpts from the August 17,

2012 deposition of Derek Leslie-Cook.
30.

Attached hereto as Exhibit 29 is a true and correct copy of excerpts from the August 23,

2012 deposition of Gary Holt.
31.

Attached hereto as Exhibit 30 is a true and correct copy of excerpts from the September

6, 2012 deposition of Ophir Frieder, Ph.D.
32.

Attached hereto as Exhibit 31 is a true and correct copy of excerpts from the July 31,

2012 deposition of Mark Blais.
33.

Attached hereto as Exhibit 32 is a true and correct copy of excerpts from the June 5,

2012 Markman Hearing transcript.
34.

Attached hereto as Exhibit 33 is a true and correct copy of the April 7, 2010 decision by

the United States Court of Appeals for the Federal Circuit in the case of Bid for Position, LLC v.
AOL, LLC, and Google, Inc., Appellate No. 2009-1068.
I declare under penalty of perjury of the laws of the United States that the foregoing is
true and correct.
Dated: September 12, 2012

DATED: September 12, 2012

/s/ Stephen E. Noona
Stephen E. Noona
Virginia State Bar No. 25367
KAUFMAN & CANDLES, P.C.
150 West Main Street, Suite 2100
Norfolk, VA 23510
Telephone: [phone]
Facsimile: [phone]
[e-mail]
David Bilsker
David A. Perlson
QUINN EMANUEL URQUHART &
SULLIVAN, LLP
50 California Street, 22nd Floor
San Francisco, California 94111
Telephone: [phone]
Facsimile: [phone]
[e-mail]
[e-mail]

Counsel for Google Inc., Target Corporation,
IAC Search & Media, Inc., and
Gannet Co., Inc.

By: /s/ Stephen E. Noona
Stephen E. Noona
Virginia State Bar No. 25367
KAUFMAN & CANDLES, P.C.
150 W. Main Street, Suite 2100
Norfolk, VA 23510
Telephone: [phone]
Facsimile: [phone]
Robert L. Burns
FINNEGAN, HENDERSON, FARABOW, GARRETT &
DUNNER, LLP
Two Freedom Square
11955 Freedom Drive
Reston, VA 20190
Telephone: [phone]
Facsimile: [phone]
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.

CERTIFICATE OF SERVICE
I hereby certify that on September 12, 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 (also served by hand delivery on 9/11/12)
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.

/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]