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

Filing 283

Memorandum in Support re 282 MOTION for Sanctions Plaintiff I/P Engine, Inc.'s Third Motion for Discovery Sanctions Regarding Untimely Discovery Responses 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, # 7 Exhibit 7, # 8 Proposed Order)(Sherwood, Jeffrey)

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF VIRGINIA
NORFOLK DIVISION
__________________________________________
)
)
)
Plaintiff,
)
v.
)
)
AOL, INC. et al.,
)
)
Defendants.
)
__________________________________________)
I/P ENGINE, INC.,

Civ. Action No. 2:11-cv-512
REDACTED VERSION

MEMORANDUM IN SUPPORT OF PLAINTIFF I/P ENGINE, INC.’S
THIRD MOTION FOR DISCOVERY SANCTIONS
REGARDING UNTIMELY DISCOVERY RESPONSES

I.

INTRODUCTION
On September 14, 10 days after the close of fact discovery, Google produced more than

250 pages of source code that had never previously been disclosed. Google also served
supplemental interrogatory responses asserting that the previously concealed source code
allegedly shows that, prior to 2012, the accused systems did not include all features that I/P
Engine has accused of infringement. Google’s untimely new production and supplemental
interrogatory responses come after the close of fact discovery (September 4), after the close of
expert discovery (September 11), and after service of all expert reports.
There is no excuse for Google’s delay. I/P Engine requested production of Google’s
technical documents in its November 11, 2011 First Request for Documents. Google refused at
that time to produce any source code. After the Court entered a Protective Order that contained
pages of provisions relating to source code, which Google insisted on, I/P Engine requested that
it be permitted to inspect specific portions of source code that Google’s Rule 30(b)(6)
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representative identified at deposition as being necessary to confirm the technical operation of
the accused systems. Ex. 1. As a result of that review and analysis, I/P Engine identified
in the source code that are important to the infringement issues in this case. I/P
Engine then served an interrogatory requesting that Google identify of all

used in

Google’s accused systems for the period of alleged infringement (September 2005 to present).
I/P Engine requested that information to confirm that Google had been using the same
since 2005, so that I/P Engine’s expert could rely on Google’s identification of those particular
for the full infringing period. Google responded to that interrogatory by pointing to
the exact same source code, and the exact same

that had already been produced. At no

time during discovery did Google identify the additional 250 pages of source code that were
disclosed on September 14, and at no time during fact discovery did Google suggest
I/P Engine and its expert relied upon
Google’s discovery responses in formulating its infringement opinions, as set forth in I/P
Engine’s expert report of July 25, 2011.
Google cannot credibly argue that it was unaware – or did not understand – the
significance of the

information, nor can it argue that it was somehow exempt from

answering I/P Engine’s interrogatory based on a lack of understanding about the significance of
the information. Google long has been aware that the
be relevant to the infringement issues in this case, e.g., the

used in the source code would
identified by Dr. Frieder’s

July 25 Report as representing the content and collaborative data recited in the claims. In fact,
Google identified certain

during the testimony of its Rule 30(b)(6) witness. Then,

Google confirmed in its interrogatory responses that the source code produced as a result of that

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testimony was fully responsive. Thus, Google has no justification for concealing the additional
source code that was produced after the close of all discovery.
The prejudice to I/P Engine is severe. The production by Google of this evidence after
the close of both fact and expert discovery, after I/P Engine served its expert reports, and after
I/P Engine’s infringement expert had already been deposed, utterly deprives I/P Engine from
reviewing, analyzing, refuting, or deposing Defendants’ fact witnesses regarding this new source
code. Trial is imminent. There is no way for I/P Engine to cure this harm and preserve the
pretrial schedule and trial date. Delay would only reward Google; I/P Engine is not seeking and
would object to any delay. Preclusion of this untimely production is the appropriate remedy.
Preclusion is appropriate under Rule 16(f) as Google’s production violates this Court’s Rule 16
Scheduling Order because the production was clearly after the close of fact and expert discovery.
Preclusion also is consistent with this Court’s comments during the hearing on September 18,
2012. Preclusion as a remedy for untimely disclosure has been endorsed by the Federal Circuit.
Woods v. DeAngelo Marine Exhaust, Inc., No. 2010-1478, 2012 WL 3683536 (Fed. Cir. Aug.
28, 2012) (sustaining as a discovery remedy the preclusion of evidence disclosed during the last
days of fact discovery); see also Barksdale v. E & M Transp., Inc., 2010 WL 4534954 (E.D. Va.
2010).
II.

LEGAL STANDARD AND RELIEF SOUGHT
A.

Legal Standards

Parties have an obligation under a court’s Rule 16 scheduling order to comply with the
discovery deadlines. Rule16(f) allows for sanctions if a party fails to obey a scheduling order,
including “prohibiting the disobedient party … from introducing designated matters into
evidence and “prohibiting the disobedient party from supporting or opposing designated claims
or defenses.” Fed. R. Civ. P. 37(b)(2)(A)(ii), which is referenced by Rule 16(f)(1).
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The Federal Rules of Civil Procedure require parties to timely provide responses to
discovery requests. Fed. R. Civ. P. 26, 33 and 34. Federal Rule of Civil Procedure 26(e)(1)
requires timely supplementation of responses to interrogatories and requests for production if the
previous response is incomplete or incorrect. If a party fails to provide the information required
by Rule 26(e), the party is not allowed to use that information a trial unless the failure was
substantially justified or is harmless. Fed. R. Civ. P. 37(c)(1) (“the party is not allowed to use
that information . . . to supply evidence on a motion, at a hearing, or at a trial, unless the failure
was substantially justified or harmless”). The Federal Circuit recently emphasized that these
rules “prohibit[] parties who are aware of a deficient response from holding back material items
and disclosing them at the last moment.” Woods, No. 2010-1478, 2012 WL 3683536, at *7.
In the Fourth Circuit, five factors guide whether a failure to timely supplement was
“substantially justified or harmless:”1
(1) the surprise to the party against whom the evidence would be offered;
(2) the ability of that party to cure the surprise;
(3) the extent to which allowing the evidence would disrupt the trial;
(4) the importance of the evidence; and
(5) the non-disclosing party’s explanation for its failure to disclose the evidence.
Southern States Rack And Fixture, Inc. v. Sherwin-Williams Co., 318 F.3d 592, 597 (4th Cir.
2003) (characterizing these factors as preventing “surprise and prejudice”).
The party facing sanctions has the burden of showing that its actions were substantially
justified or harmless. Id. at 596. Untimely supplementations may be struck regardless of

1

The factors to be considered in determining whether sanctions are appropriate under Rule 16(f)
are similar to those considered under Rule 37(c)(1): (1) the reason for the failure; (2) the
importance of the evidence; (3) potential prejudice in allowing the evidence and (4) the
availability of a continuance to cure such prejudice. Scott v. Holz-her, U.S., Inc., 2007 WL
3171937 (W.D. Va. 2007)

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whether the supplementing party acted in bad faith. Id. (“neither of these requirements suggests
that the non-disclosing party must act in bad faith or otherwise culpably”).
B.

Relief Sought

I/P Engine is respectfully seeking to preclude Google from using in any form its untimely
produced source code for any purpose in this litigation, as well as to have such information
stricken from Google’s supplemental responses to Interrogatory Nos. 21 and 22.
III.

DISCUSSION
A.

Background

In its November 7, 2011 First Requests for Documents, I/P Engine expressly asked for
Google’s technical documentation. For example, Document Request No. 6 stated:
For each Google system identified in response to Plaintiff’s Interrogatory
No. 2, documents sufficient to show the function, operation and use of the
identified systems to present advertisements on search results pages in
response to a user query.
Ex. 2.
After receiving an initial technical production that did not include source code, the parties
painstakingly negotiated a protective order that contained pages of provisions related to source
code. Google insisted on those provisions. That Order was entered on January 23, 2012.
I/P Engine also asked Google to disclose all facts relating to non-infringement in its First
Set of Interrogatories to Google. For example, Interrogatory No. 6 sought “each basis for
Google’s contention that it is not a direct infringer including, but not limited to, all facts,
documents, communications and/or events which Google contends are pertinent thereto.” Ex. 3.
I/P Engine pressed Defendants to complete their document production, which was
substantially completed in April 2012. Google still had not produced source code. I/P Engine
proceeded with Rule 30(b)(6) deposition discovery; Google took more than two months to begin

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to produce witnesses. Based on the testimony of one of Google’s 30(b)(6) representatives,
Jonathan Alferness, I/P Engine requested specific portions of Google’s source code that had not
been previously produced. Pursuant to the provisions of the Protective Order, Google made its
source code available for inspection on July 11, 2012. I/P Engine’s counsel and technical expert
reviewed the production, printing relevant portions. I/P Engine used that source code production
during depositions of Google engineers and in formulating its infringement positions. Through
I/P Engine’s analysis, and deposition testimony from Google witnesses, I/P Engine learned that
certain

used in the source code were relevant to the infringement issues in the case.

I/P Engine’s infringement expert identified and discussed those templates in his expert report,
and explained why they were relevant to his analysis.
To ensure that the source code that Google had produced was representative of all
relevant source code in the accused systems since 2005, I/P Engine served an interrogatory
requesting that Google identify all historical versions of the

used in its source code:

Ex. 4 (emphasis added). Google responded to these interrogatories by directing I/P Engine to the
exact same source code that it had previously produced, and also to Google’s fact witness
deposition testimony regarding that same source code. Ex. 5. This was the same source code
that Google relied upon throughout this case. Google did not identify any other source code, or
anything suggesting that there were different

for different periods of time.

Then, after the close of both fact and expert discovery, and after the deposition of I/P
Engine’s infringement expert, on September 14, Google supplemented its responses to I/P
Engine’s Interrogatory Nos. 21-22. Ex. 6. Google also stated that it would be producing brand
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new source code relating to its accused systems. Id. In its supplemental response, Google
identifies different

, which it claims existed prior to November 8, 2010, and

directed I/P Engine to its soon-to-be produced source code for these additional
Id.
Google apparently intends to use the untimely produced-source code to rebut I/P
Engine’s infringement analysis and argue that there could be no infringing use prior to
November 8, 2010. If Google had non-infringement arguments, it had an obligation to make that
known during the discovery period. Nothing has transpired post-discovery that would justify
Google’s production of this new source code. During the meet and confers relating to this
motion, Google’s only claimed justification for its late production of the source code was the fact
that, prior to his deposition, Dr. Frieder’s updated his infringement expert report to include
additional citations to evidence (deposition testimony and documents) that I/P Engine did not
have when he served his report.2 Dr. Frieder’s opinions and conclusions did not change in any
way.3
Dr. Frieder’s citations to the deposition testimony of Google’s fact witnesses does not in
any way justify Google’s belated response to the interrogatory requesting
That information may have been newly disclosed to I/P Engine and Dr. Frieder, but Google has
had that information in its possession for years. Google knew that I/P Engine was interested in
the source code templates. During discovery, Google identified the source code

on

2

Dr. Frieder also acknowledged that, after his report was served, this Court’s altered the claim
construction of the term “collaborative feedback data.” Dr. Frieder concluded that the Court’s
new construction did “not alter [his] conclusion that all asserted claims are infringed” and stated
that “[t]he evidence relied upon previously satisfies the Court’s revised construction of
‘collaborative feedback data.’”
3

I/P Engine provided a redline version of Dr. Frieder’s updated report so Defendants could
easily what citations were new. Google has conceded that all of the new material in Dr.
Frieder’s updated report post-dated his initial report.

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which I/P Engine relies. Google cannot at its own discretion after the close of fact discovery
decide to now produce previously concealed information because it perceives the information
may help it. I/P Engine’s interrogatory requested all

2004-present, and Google pointed

to the already-produced source code. The interrogatory did not reference Dr. Frieder’s report,
nor did it ask for only the
interrogatories asked for

that would be relevant to his infringement theories4 – the
, and Google cited the already-produced code.

Google should be held to that answer, as I/P Engine has relied on its accuracy.
The harm to I/P Engine is self-evident. Google substantively responded to all of I/P
Engine’s discovery and produced substantial source code, and I/P Engine relied on those
responses and productions. I/P Engine served its infringement expert report on July 25, 2012.
I/P Engine relied on the completeness of Google’s previously produced source code while
deposing Google’s engineers and experts. I/P Engine’s expert witnesses prepared expert reports
based on the information that Google had made available. With trial less than a month away, the
harm to I/P Engine cannot be mitigated in any meaningful way. If the Court allowed Google to
make this supplementation, then Google would also have to produce all other source code sought
by I/P Engine’s discovery requests (i.e., pre-2010 source code). I/P Engine would then have the
right to properly analyze and assess Google’s all of that information in addition to the newly
produced source code, I/P Engine would need to depose additional Google engineers on this
information, I/P Engine would need to update its expert report prior to trial to explain why the

4

Even now, Google appears to only respond to the portions of the interrogatory that helps its
case. Google only produced a single snapshot of history – a single 2010 version that Google
claims shows
. Google has still not accounted for versions prior to 2010, and
it certainly has not identified
, as requested by the
interrogatories. Google cannot have it both ways, by picking and choosing what portions of an
interrogatory it wants to comply with (and when) for its own self-serving reasons, but failing to
provide a fulsome response when it decides it does not help it.

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newly produced information also infringes the patents-in-suit and Google would want to respond
to all of that discovery and disclosure. The time for all of that activity has passed.
B.

Preclusion of Google’s Untimely Produced Source Code is the Only
Appropriate Remedy to Mitigate the Harm and Substantial Prejudice caused
to I/P Engine

The five factors considered under Rule 37(c)(1) illustrate the unjustifiable delayed by
Google and severe harm caused to I/P Engine because of Google’s untimely discovery. Each of
these factors are discussed in turn below.
1.

Factor 1: The Surprise to I/P Engine

Factor 1 weighs in favor of I/P Engine. I/P Engine was surprised. There was no way that
I/P Engine could have anticipated that after the completion of fact discovery, expert discovery,
and on the eve of trial, Google would produce new source code relating to key infringement
issues in this case. Google had relied on the previously produced source code for the entirety of
this case. Further, Google never gave any indication prior to the close of discovery that the
information it provided was incomplete. Indeed, during the discovery period Google responded
to I/P Engine’s interrogatories that requested identification of

used from

2004 to the present by citing only to documents it had already produced. See Ex. 5 at 10-12.
Even more, I/P Engine deposed three Google engineers about the source code and at no time
during those depositions did Google’s engineers testify that the source code was incomplete or
that different relevant source code existed.
2.

Factor 2: I/P Engine’s Ability To Cure the Surprise and Factor 3: The
Extent to Which Allowing the Evidence Would Disrupt the Trial

Factors 2 and 3 also weigh in favor of excluding Google’s untimely discovery responses.
There is no way for I/P Engine to cure this harm and preserve the pretrial schedule and trial date.
At this late stage, the only way that the surprise (prejudice) may be cured is by precluding

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Google from using in any form the untimely produced source code and striking its supplemental
interrogatory responses. See Jarrell-Henderson v. Liberty Mut. Fire Ins. Co., 2009 WL 347801
(E.D.Va. 2009) (striking documents produced after the close of discovery); Barksdale v. E & M
Transp., Inc., 2010 WL 4534954 (E.D. Va. 2010) (striking documents produced ten days after
close of discovery and interrogatory responses produced twelve days after close of discovery).
Google’s unilateral withholding of some, but not all, of its source code until after the
close of discovery is not something that I/P Engine could have predicted. The effects of
Google’s untimely production on I/P Engine’s case preparation cannot be undone. See Slaughter
v. Barton, 2003 WL 24100297 (W.D. Va. 2003) (“allowing such an untimely disclosure would
be disruptive to the trial in this matter because it would condone the strategy of last-minute
disclosures, behavior that flies in the face of the Federal Rules of Civil Procedure”).
Trial is scheduled to begin on October 16. Under the long-established pretrial schedule,
there is no way that I/P Engine would be able to adequately account for Google’s new source
code and comply with the Court’s pretrial schedule and trial date. Indeed, to understand and
process Google’s new source code as noted above, I/P Engine would have to expend significant
time and effort, have its expert witness inspect the source code, conduct depositions of Google’s
engineers, and have its expert witness prepare a supplemental report to address this new
evidence. These activities would essentially require the reopening of discovery and moving the
pretrial deadlines and the trial date. Any such delay only would reward Defendants for their
dilatory conduct.
3.

Factor 4: The Importance of the Evidence

I/P Engine cannot fully evaluate the importance of the new evidence because it has not
had a sufficient opportunity to review and analyze Google’s new source code nor has it even
received the remainder of the code requested by its interrogatory. Based on Google’s
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supplemental interrogatory responses, however, it appears that the new source code that Google
has selectively produced will be used, at a minimum, to force I/P Engine to supplement its
infringement proofs. As discussed above, I/P Engine cannot do so a Court order reopening
discovery and modifying the Court’s pretrial and trial dates. This factor weighs in I/P Engine’s
favor.
4.

Factor 5: Google’s Explanation For Its Failure To Disclose Its
Evidence

Google has no justification for producing this new source code after the close of
discovery. The source code is not newly discovered evidence. Google itself acknowledges this
code dates back to at least November 8, 2010. Ex. 6. I/P Engine unambiguously requested
Google’s source code. Google alleges that its untimely disclosure was necessitated because Dr.
Frieder updated his report. Id. Nothing in Dr. Frieder’s supplemental report justifies Google’s
production of its additional source code after the close of discovery, particularly as I/P Engine
expressly asked for and sought out Google’s source code in documents requests (November 7,
2011), through deposition (June 21, 2012), by letter (June 27, 2012), and by interrogatory
(August 1, 2012). None of I/P Engine’s discovery requests were tied to Dr. Frieder’s report, so
any updates in his report have no bearing on Google’s underlying discovery obligations.
IV.

CONCLUSION
As explained above, Google’s delay was neither justified nor harmless. The harm to I/P

Engine because of Google’s production of material source code after the close of discovery

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cannot be cured. The appropriate sanction is excluding the newly produced source code and
striking Google’s supplemental responses to Interrogatory Nos. 20-22. Any other sanction
would simply reward Google for its dilatory tactics.
Dated: September 21, 2012

By: /s/ Jeffrey K. Sherwood
Donald C. Schultz (Virginia Bar No. 30531)
W. Ryan Snow (Virginia Bar No. 47423)
CRENSHAW, WARE & MARTIN PLC
150 West Main Street
Norfolk, VA 23510
Telephone:
[phone]
Facsimile:
[phone]
Jeffrey K. Sherwood (Virginia Bar No. 19222)
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]
Counsel for Plaintiff I/P Engine, Inc.

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CERTIFICATE OF SERVICE
I hereby certify that on this 21st day of September, 2012, the foregoing
MEMORANDUM IN SUPPORT OF PLAINTIFF I/P ENGINE, INC.’S THIRD MOTION
FOR DISCOVERY SANCTIONS REGARDING UNTIMELY DISCOVERY
RESPONSES, was served via the Court’s CM/ECF system and via Hand Delivery, 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/ Jeffrey K. Sherwood

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