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

Filing 310

Declaration 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, 301 MOTION in Limine #2 to Exclude Evidence of Entire Market Value of Accused Products and of Defendants' Size, Wealth and Overall Revenues, 303 MOTION in Limine #3 to Exclude Marketing and High-Level Non-Technical Materials Related to Historical Click-Through Rate, 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, 299 MOTION in Limine #1 to Preclude Plaintiff From Introducing Evidence of Willful Infringement, Pre-Suit Knowledge, or Copying of Joshua L. Sohn in Support of Defendants' Motions in Limine by AOL Inc., Gannett Company, Inc., Google Inc., IAC Search & Media, Inc., Target Corporation. (Attachments: # 1 Exhibit A, # 2 Exhibit B, # 3 Exhibit C, # 4 Exhibit D, # 5 Exhibit E, # 6 Exhibit F, # 7 Exhibit G, # 8 Exhibit H, # 9 Exhibit I, # 10 Exhibit J)(Noona, Stephen)

EXHIBIT B

Jim Grossell
From:
Sent:
To:
Cc:
Subject:

Monterio, Charles [[e-mail]]
Monday, August 27, 2012 5:29 PM
QE-IP Engine; Stephen E. Noona ([e-mail])
zz-IPEngine; W. Ryan Snow ([e-mail]); Donald C. Schultz ([e-mail])
I/P Engine v. AOL et al.: Discovery Issues

Emily,
The below proposal is not workable. I am not sure where to go from here. Mr. Becker’s schedule for the other
trial is not the issue. The schedule allows for expert discovery to be completed by September 11. The dates
that he is available are within that time period. Nevertheless, his trial was originally scheduled for August 13
through 24, with him testifying the second week of trial. He represents the Defendants; Plaintiff is still putting
on its case. Mr. Becker allotted for an additional week cushion when we scheduled his deposition for Sept. 5,
but could not anticipate this current delay. He is scheduled to testify the week of September 3; his counsel
believes likely September 5, but it could also be September 6. There is no realistic way that he can be made
available at that time; unless the court moves the dates again.
While we do not believe that this is an issue that should be taken to the Court, expert discovery after the
deadline would be too prejudicial to the pretrial schedule. We are amenable to talking through alternative
pretrial dates, but September 14 is too far out and would cause significant burden to the rest of the schedule;
thus, we cannot agree to depositions after the expert deadline, particularly as Mr. Ugone is available on Sept. 7.
Let’s plan on meeting and conferring tomorrow to finalize (all) expert deposition dates and the proposed pretrial
dates or deem this issue at an impasse. We are willing to move dates around, but again they must be before the
deadline. So, for example, we will agree to schedule the deposition of all experts with the initial burdens of
proof to go first, followed by rebuttal experts.
One other possibility, but which I have not talked with Mr. Becker about yet, is perhaps scheduling Mr.
Becker’s deposition on September 9 (Sunday). Let me know if that date might work with counsel’s schedule.
Then Mr. Ugone could be deposed either September 10 or 11.
Let us know whether you are available at 6:15 ET tomorrow to meet and confer. If not, please provide
alternative times tomorrow to do so.
Regarding the willfulness issue, as counsel has pointed out, I/P Engine has not plead willfulness. We are not
exactly sure why this is an issue at this point. To the extent that I/P Engine made any future determination to
add willfulness, Google of course, would be entitled to oppose based on whatever legal grounds it felt were
applicable.
Regarding the issue of reducing the number of asserted claims, we will respond to this issue after we receive
Defendants’ non-infringement expert report. I/P Engine cannot make a reasoned evaluation of which claims, or
how many claims, it may or may not agree to litigate without knowing Defendants’ positions on the claims.
Regarding the issue of reducing the prior art witnesses identified in Google’s Initial Disclosures, we are not sure
how this issue and the willfulness/claim identification issues are related. As you are aware, fact discovery
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closes in this case on September 4. Google has identified 40-prior art witnesses. We are simply asking whether
Google would be willing to identify those witnesses that it intends to use at trial. If Google refuses to do so,
please let us know whether Google would agree to not oppose the deposition notices of those 40 witnesses, as
the number will far exceed the five third-party depositions permitted by both sides. If Google will not so agree,
we would like to meet and confer on this issue tomorrow as well.
Charles J. Monterio, Jr.
Associate
Dickstein Shapiro LLP
1825 Eye Street NW | Washington, DC 20006
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