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

Filing 306

Memorandum in Support re 305 MOTION in Limine #4 to Preclude Plaintiff from Offering Evidence or Argument Relating to Defendants' Conduct During Discovery or to Google's Unproduced Licenses filed by AOL Inc., Gannett Company, Inc., Google Inc., IAC Search & Media, Inc., Target Corporation. (Noona, Stephen)

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.

MEMORANDUM IN SUPPORT OF MOTION IN LIMINE #4 TO PRECLUDE
PLAINTIFF FROM OFFERING EVIDENCE OR ARGUMENT RELATING TO
DEFENDANTS' CONDUCT DURING DISCOVERY OR TO GOOGLE'S
UNPRODUCED LICENSES
Defendants respectfully file this Motion in Limine to preclude Plaintiff from offering
evidence or argument relating to Defendants' conduct during discovery or to Google Inc.'s
("Google") unproduced licenses.
I.

PLAINTIFF SHOULD BE PRECLUDED FROM OFFERING EVIDENCE OR
ARGUMENT RELATING TO DEFENDANTS' CONDUCT DURING
DISCOVERY OR TO GOOGLE'S UNPRODUCED LICENSES
Without cause, Plaintiff I/P Engine, Inc. ("Plaintiff") may attempt to argue to the jury that

Defendants Google Inc., Target Co., IAC Search & Media, Inc., and Gannett Co, Inc.,
("Defendants") have delayed or resisted in their production of documents and witnesses during
the discovery process in this litigation to bolster a lack of evidence. Plaintiff's only possible
motivation for doing so would be to confuse and bias the jury against Defendants.

Any such allegations are baseless and wholly irrelevant to resolution of the issues in this
lawsuit, and should therefore be excluded under Federal Rule of Evidence 402. Moreover, there
have been no discovery motions granted that would allow such unfounded accusations, which
would be highly prejudicial to Defendants and should be excluded under Federal Rule of
Evidence 403. Such unsubstantiated accusations would only confuse and bias the jury by
potentially leading them to believe that Defendants have attempted to conceal evidence or
otherwise bias them against Defendants. Accordingly, Defendants hereby move this Court, in
limine, for an order precluding Plaintiff from introducing evidence or making arguments related
to the other Defendants' conduct during the discovery process.
Throughout this litigation, Plaintiff has generally asserted the unsubstantiated belief that
Defendants have withheld various relevant documents, information, and witnesses. For example,
on April 11, 2012, Plaintiff moved to compel the production of Google's custodial documents.
The motion made incorrect and misleading statements about Google's diligence in producing
documents and the significant resources that Google has committed to producing documents in a
timely manner. (D.N. 117.) Denying this motion in part, the Court ordered Google to produce
the same documents that Google had already offered to produce. The Court ordered that they be
produced on a rolling basis and by May 30, 2012, both of which Google had already agreed to.
(D.N. 156.)
More recently, Plaintiff moved for sanctions regarding "untimely disclosed prior art,"
claiming the Defendants were engaging in "untimely and highly prejudicial discovery tactics"
and purposefully "sandbagging" the Plaintiff. (D.N. 201.) At the hearing, Plaintiff falsely
accused Defendants of deliberately withholding this art. Plaintiff also falsely alleged that
Defendants were engaging in a pattern of improper discovery conduct and threatened to file
several other motions based upon the same premise. Plaintiff's motion was denied. (D.N. 275.)
Similarly, Plaintiff's damages expert Dr. Becker has repeatedly insinuated (and
sometimes outright accused) that Defendants have engaged in discovery misconduct. (See, e.g.,
Declaration of Emily C. O'Brien in Support of Defendants’ Motion to Exclude ("O'Brien Dec."),
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Ex. 1 (7/25/12 Expert Report of Stephen L. Becker, Ph.D. ("Becker Rep.")), ¶ 66 n.97, ¶ 150
n.203, ¶ 177 n.240.) Dr. Becker, repeatedly alleged supposed discovery misconduct by Google
to excuse the shortcomings in his opinions. At one point, Becker protested: "You know, it –
there's only so much that I can do when, you know, Google is the one who is holding the cards
with respect to not having produced the kind of data that obviously underlies these charts."
(Sohn Dec., Ex. I, 157:7-10) He went on to say that "it's frankly remarkable, in my opinion,
that Google has not produced what I think any reasonable person would assume is present – has
to be present in their records. I haven't seen it. . . . it's just staggering to me that . . . we can
stack up in a pretty small stack the documents that have actually been produced responsive to
that request." (Id., 157:24-158:9.) In response to a question about whether he had asked for a
final version of a draft, Dr. Becker said "I didn't specifically ask that, that way. I think it would
have been covered with a general request to get Google to do what it's supposed to do, which is
produce any relevant documents related to this area of the case." (Id., 160:21-25.) Later, he said
that one of his calculations was "not absolutely precise but it's the best we can do since Google
didn't produce the underlying spreadsheet." (Id., 166:4-6.). These are just examples of Dr.
Becker's many unsubstantiated and superfluous criticisms of Google's discovery conduct which
Dr. Becker has gratuitously volunteered, which did not qualify as statements within the purview
of his alleged expertise, and which certainly would not aid the trier of fact in resolving the issues
in this case.
During the deposition of Google’s damages expert, Dr. Ugone, Plaintiff's counsel also
alluded to the existence of Google licenses that were not produced in this litigation, again
insinuating that Defendants were trying to hide something by not producing them despite the fact
that Plaintiff has never suggested that unproduced licenses were relevant to the litigation or
improperly withheld (which they were not). For example, the following exchange took place
during the deposition:
Q. Did you review all of Google's inbound licenses?
A. That were produced in this case, yes.
Q. What about that weren't produced in this case?

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A. I haven't seen -- let's try it this way.
Here's the best answer I can give you. I have
reviewed what was produced in this case. I did not
go back and look at any other cases that I might
have -- we talked about the other case. I didn't go
back and look at those license agreements, but I
would be very surprised if I reached a different
conclusion.
...
Q. Sure. You didn't go back and ask Google to look
at all of its inbound licenses before you made that
opinion, right?
...
A. So I do recognize that there might be some
licenses I haven't seen that for whatever reason
aren't relevant to this case that haven't been
produced.
Q. Right.
A. So I suppose one could say, you know, looking
at the license agreements that were produced that
were deemed relevant in this case by however that
process happens, okay, that I drew the conclusions
that I did.
Q. Okay. Did you look at any of Google's outbound
licenses?
A. We looked at -- everything we looked at that was
in -- was in the report, so there were all those
inbound license agreements.
...
Q. Right. You didn't ask to see any of their
outbound licenses other than if they were produced
in this case?
A. Correct.
(Sohn Dec., Ex. J, 35:25-37:17 (emphasis added).) Other iterations on that theme
continued throughout the deposition. (See, e.g., id., 189:17-20.) Any references to unproduced
licenses would be misleading and wholly irrelevant to resolution of the issues in this lawsuit.
Defendants have at all times been reasonable and cooperative in producing documents
and witnesses. To date, Defendants have produced almost 1 million pages of documents, and
continue to supplement their production in good faith. Defendants are concerned that, despite
their best efforts to be reasonable and diligent in discovery, Plaintiff will attempt to introduce
evidence or argument suggesting otherwise. Such evidence and argument would be irrelevant,
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highly prejudicial, and serve to inflame and confuse the jury. Defendants, therefore, ask the
Court to enter an order precluding Plaintiff from introducing evidence relating to the other
parties' conduct during discovery.
II.

ALLEGATIONS OF DELAY DURING DISCOVERY ARE ENTIRELY
IRRELEVANT TO THIS LAWSUIT.
Plaintiff has no basis to assert that Defendants have not fully complied with their

discovery obligations in this litigation, including through references to unproduced licenses;
however, even assuming Plaintiff somehow had a basis for the assertion, such facts would not be
relevant to any issues which the jury has been tasked with deciding, such as Plaintiff's claims of
patent infringement or Defendants' counterclaims of invalidity. See Fed. R. Evid. 401
("'Relevant evidence' means evidence having any tendency to make the existence of any fact that
is of consequence to the determination of the action more probable or less probable than it would
be without the evidence."); Fed. R. Evid. 402 ("Evidence which is not relevant is not
admissible."). While Plaintiff might argue that evidence of discovery conduct would be relevant
to a determination of sanctions under Rule 37 of the Federal Rules of Civil Procedure or
enhanced damages under Section 281 of U.S. Code Title 35, these determinations are within the
exclusive province of the Court and it is improper to put them before a jury. Accordingly,
Plaintiff should be precluded under Federal Rule of Evidence 402 from introducing evidence or
argument during trial relating to Defendants' conduct during discovery.
III.

EVIDENCE OF DEFENDANTS' CONDUCT DURING DISCOVERY SHOULD
BE EXCLUDED BECAUSE IT WILL RESULT IN JURY BIAS AND
PREJUDICE.
Plaintiff's allegations that it believes Defendants failed to produce or were slow to

produce relevant documents or witnesses may lead the jury to incorrectly assume that
Defendants intentionally attempted to conceal evidence of wrongdoing or otherwise prejudice
the jury against Defendants. While such statements are wholly untrue and unsupportable, they
may make it appear to the jury that Defendants were hiding something or being less than

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forthcoming. This would result in bias against Defendants, as the jury might not only believe
that Plaintiff is correct – which it is not – but that the alleged documents or witnesses include
evidence detrimental to Defendants' case or beneficial to Plaintiff. Thus, the likelihood that this
type of evidence will bias the jury is far too great to allow the admission of such testimony.
Such allegations will also result in a waste of time and provide an unnecessary sidetrack
from the actual issues in the case. Defendants will be forced to try a case within a case to correct
the unsupported inferences of delay or wrongful withholding. Plaintiff's allegations regarding
Defendants' conduct during discovery, including any references to unproduced Google licenses,
should therefore be excluded under Rule 403 of the Federal Rules of Evidence. See, e.g., Green
v. Baca, 226 F.R.D. 624, 642-43 (C.D. Cal. 2005) (holding in a section 1983 action that evidence
of defendant's purported discovery violations should be excluded under Rule 403 because their
probative value was substantially outweighed by the danger of unfair prejudice); Miller v. Ford
Motor Co., 2004 WL 4054843, at *10 (M.D. Fla. July 22, 2004) (granting defendants' motion in
limine to exclude reference or evidence regarding Defendants' alleged misuse of discovery
practices); Blue Cross & Blue Shield, Inc. v. Philip Morris, Inc., 2000 WL 1805359, at *2
(E.D.N.Y. Dec. 11, 2000) (granting defendants' motion in limine to exclude references to alleged
discovery abuses).
Conclusion
For the foregoing reasons, Defendants respectfully ask this Court to preclude any
evidence and argument during trial relating to any parties' conduct during discovery.

DATED: September 21, 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]

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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 & 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]
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.

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CERTIFICATE OF SERVICE
I hereby certify that on September 21, 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.

/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]

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