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

Filing 247

MOTION for Leave to File and Memorandum In Support of Motion For Leave To File Supplemental Brief In Opposition To Plaintiffs Motion For Discovery Sanctions and Declaration Of Joshua L. Sohn In Support Of Defendants Supplemental Brief In Opposition To Plaintiffs Motion For Discovery Sanctions by AOL Inc., Gannett Company, Inc., Google Inc., IAC Search & Media, Inc., Target Corporation. (Attachments: # 1 Exhibit 1, # 2 Exhibit 2)(Noona, Stephen)

Exhibit 1
UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF VIRGINIA
NORFOLK DIVISION

I/P ENGINE, INC.
Plaintiff,
v.

Civil Action No. 2:11-cv-512

AOL, INC., et al.,
Defendants.

SUPPLEMENTAL BRIEF IN OPPOSITION TO PLAINTIFF’S MOTION FOR
DISCOVERY SANCTIONS
Defendants file this Supplemental Brief to provide the Court with notice of certain factual
developments that occurred after briefing was completed on Plaintiff’s Motion for Discovery
Sanctions (Dkt. 200). These subsequent developments confirm the lack of prejudice to Plaintiff
from Defendants’ July 2 disclosure of the Bowman, Culliss, and Ryan references.
On August 14, Plaintiff served document subpoenas on Ruben Ortega (co-inventor of the
Bowman reference) and Gary Culliss (inventor of the Culliss reference). (Sohn Decl., ¶ 2).
Mssrs. Ortega and Culliss produced documents on August 22 and September 4, respectively.
(Id.). On August 31, Plaintiff served deposition subpoenas to Mssrs. Culliss and Ortega for
September 4 – the very next business day and the last day of fact discovery under the Court’s
Scheduling Order. (Id., ¶ 3). Despite this late service, Defendants did not oppose Plaintiff
taking these depositions after the fact discovery cutoff, as memorialized in the parties’ Joint

01980.51928/4961816.1

1

Motion to Amend the Scheduling Order (Dkt. 243). Starting on September 3, Mr. Ortega’s
counsel offered several dates for Mr. Ortega’s deposition, and on September 6, counsel
suggested a preferred date of September 25. (Sohn Decl., ¶ 4). Meanwhile, Defendants offered
to make Mr. Culliss available for deposition on September 27. (Id.). Plaintiff has not yet
accepted the September 25 date for Mr. Ortega’s deposition or the September 27 date for Mr.
Culliss’ deposition. (Id.)1
Further, on August 29, Plaintiff’s expert (Dr. Jaime Carbonell) submitted his Rebuttal
Expert Report Regarding Validity in this case. (Id., ¶ 5). Dr. Carbonell’s report addressed
Bowman, Culliss, and Ryan at length, contending that none of these references invalidate the
Asserted Patents. (Id.) At no point did Dr. Carbonell state that he was hindered or prejudiced in
his ability to analyze these references for purposes of forming his validity opinions. (Id.) Dr.
Carbonell is scheduled to be deposed on September 21. Likewise, Dr. Lyle Ungar (Defendants’
invalidity and non-infringement expert) is scheduled to be deposed on September 22 and 23 for
twelve total hours. (Id., ¶ 6).2
Accordingly, Plaintiff has now taken (or is scheduled to take) all discovery into the
Bowman, Culliss, and Ryan references it has requested.

1

Plaintiff has not sought to take any fact discovery relating to the Ryan reference.

2

Notably, Plaintiff submitted a supplemental expert infringement report one week after
Defendants’ rebuttal non-infringement report and just 36 hours before the deposition of
Plaintiff’s infringement expert, Dr. Ophir Frieder. (Sohn Decl., ¶ 7). This report disclosed new
theories and purported to address depositions occurring as early as 5 weeks earlier. (Id.) At Dr.
Frieder’s deposition, however, Plaintiff argued that Defendants suffered no prejudice from the
late-disclosed supplemental report because “we gave you the report in time for you to present
questions to Dr. Frieder. And, in fact, you did that, so I think the record will reflect that.” (Id.).

01980.51928/4961816.1

DATED: September 14, 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]
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
Gannett Co., Inc.

By: /s/ Stephen E. Noona
Stephen E. Noona
Virginia State Bar No. 25367
KAUFMAN & CANOLES, 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]

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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 14, 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.

01980.51928/4961816.1

/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]

01980.51928/4961816.1