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

Filing 308

Memorandum in Support re 307 MOTION in Limine #5 to Preclude Plaintiff From Introducing Evidence of Damages Against AOL Inc., Gannett Co., Inc., IAC Search & Media, Inc. and Target Corporation 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.
Civil Action No. 2:11-cv-512
Plaintiff,
v.
AOL INC., et al.,
Defendants.

MEMORANDUM IN SUPPORT OF MOTION IN LIMINE # 5_ TO PRECLUDE
PLAINTIFF FROM INTRODUCING EVIDENCE OF DAMAGES AGAINST AOL INC.,
GANNETT CO., INC., IAC SEARCH & MEDIA, INC., AND TARGET CORPORATION
Defendants respectfully file this Memorandum in support of their Motion to preclude
Plaintiff I/P Engine from offering evidence of any damages against AOL, IAC, Gannett, and
Target. I/P Engine’s damages contentions are directed only to Google. It has articulated no
damages theory against any of the other Defendants in this case.
The Expert Report of Stephen L. Becker sets forth I/P Engine’s damages theory. Dr.
Becker bases his calculation of a reasonable royalty on a hypothetical negotiation in 2004
between Google and Lycos (the predecessor in interest to the patents in suit). (See Declaration
of Emily C. O'Brien in Support of Defendants’ Motion to Exclude, Ex. 1 (7/25/12 Expert Report
of Stephen L. Becker, Ph.D. (“Becker Report”)), ¶ 11(b).) As Dr. Becker explains in his expert
report, a license resulting from this hypothetical negotiation would cover “not only Google, but
Google customers, such as AOL, IAC, Gannett and Target, for whom Google served searchbased ads through the accused Google Systems.” (Becker Report, ¶11(b).) Nowhere in his

report does Dr. Becker undertake a separate damages analysis for any of the other Defendants.1
He does not perform a reasonable royalty calculation based on a separate hypothetical
negotiation involving any other Defendant. And he does not base any damages claim on any
revenue from any Defendant, other than Google.2 This is not surprising because if Google pays a
reasonable royalty for the use of the accused systems to serve advertisements on its website as
well as the websites of the other Defendants, I/P engine has been fully compensated for the
alleged infringement. Seeking additional damages from the other Defendants would be double
dipping.
Moreover, in response to interrogatories asking for I/P Engine’s damages contentions
with respect to Gannett, IAC, and Target, I/P Engine provided no additional allegations. Instead,
I/P Engine merely incorporated by reference the expert report of Dr. Becker. But as Dr.
Becker’s report makes plain, I/P Engine claims damages from Google only.3
Any evidence or argument about any damages claim against AOL, IAC, Gannett, and
Target that Plaintiff might attempt to offer at trial would be irrelevant under Rule 402 and
inadmissible under Rule 403 as unfairly prejudicial, likely to confuse the jury, and a waste of

1

At most, in his report, Dr. Becker attempts to allocate Google’s revenue by website.
(See Becker Report, ¶ 191, ¶ 191 n.245, Ex. SLB-2A.)
2

Additionally, I/P Engine does not contend that any other Defendant is jointly and
severally liable for the damages attributed to Google’s operation of its accused systems. Indeed,
I/P Engine has no factual or legal basis to do so.
3

See Declaration of Margaret P. Kammerud in Support of Defendants’ Motion to
Dismiss All Claims Against AOL Inc., Gannett Co., Inc., IAC Search & Media, Inc., and Target
Corporation (“Kammerud Dec.”), Ex. A, Plaintiff I/P Engine, Inc.’s Responses and Objections to
Defendant Gannett Company, Inc.’s First Set of Interrogatories; Kammerud Dec., Ex. B, Plaintiff
I/P Engine, Inc.’s Responses and Objections to Defendant IAC Search & Media, Inc.’s First Set
of Interrogatories; Kammerud Dec., Ex. C, Plaintiff I/P Engine, Inc’s Responses and Objections
to Defendant Target Corp.’s First Set of Interrogatories.

2

time and resources. Therefore, Plaintiff should be precluded from offering such evidence at trial
or arguing to the jury that it seeks any amount of damages from AOL, IAC, Gannett, and Target.
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]
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.

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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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