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

Filing 336

Memorandum in Support re 335 MOTION in Limine Plaintiff I/P Engine, Inc.'s Third Motion in Limine to Exclude Improper Prior Art Evidence 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 Proposed Order)(Sherwood, Jeffrey)

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.

FOURTH SUPPLEMENTAL INITIAL DISCLOSURES OF GOOGLE INC. PURSUANT
TO FED. R. CIV. P. 26(a)(1)
Pursuant to Fed. R. Civ. P. 26(a)(1), Defendant Google Inc. provides the following
supplemental initial disclosures to Plaintiff I/P Engine, Inc.. These initial disclosures are made
based on information that is reasonably available to Google at this time and at this stage of the
proceedings. As additional information becomes available, Google reserves the right to
supplement these initial disclosures and/or to use documents not described herein.
A.

Individuals Like to Have Discoverable Information (Fed. R. Civ. P.
26(a)(1)(A)(i)

Google provides the following list of individuals likely to have discoverable information
that Google may use to support its claims or defenses, identifies the subjects of the information,
and provides, when possible, the last known address of the individuals.

00197.51709/4943866.1

1

Name

Contact Information

Jonathan
Alferness

May be reached through
counsel for GOOGLE.

Bartholomew
Furrow

Quinn Emanuel Urquhart
& Sullivan, LLP
50 California St., 22nd Flr.
San Francisco, CA 94111
[phone]
May be reached through
counsel for GOOGLE.

Derek LeslieCook

Connection to Case

Quinn Emanuel Urquhart
& Sullivan, LLP
50 California St., 22nd Flr.
San Francisco, CA 94111
[phone]
May be reached through
counsel for GOOGLE.

Nicholas Fox

Gary Holt

Jon Diorio

Google employee

Structure,
characteristics, and/or
operation of various
aspects of accused
features of Google's
advertising systems.

Google employee

2

Structure,
characteristics, and/or
operation of various
aspects of accused
features of Google's
advertising systems.

Google employee

Quinn Emanuel Urquhart
& Sullivan, LLP
50 California St., 22nd Flr.
San Francisco, CA 94111
[phone]
May be reached through
counsel for GOOGLE.

Structure,
characteristics, and/or
operation of various
aspects of accused
features of Google's
advertising systems.

Google employee

Quinn Emanuel Urquhart
& Sullivan, LLP
50 California St., 22nd Flr.
San Francisco, CA 94111
[phone]
May be reached through
counsel for GOOGLE.

Structure,
characteristics, and/or
operation of various
aspects of accused
features of Google's
advertising systems.

Google employee

Quinn Emanuel Urquhart
& Sullivan, LLP
50 California St., 22nd Flr.
San Francisco, CA 94111
[phone]
May be reached through
counsel for GOOGLE.

Structure,
characteristics, and/or
operation of the
accused features of
AdWords/AdSense for
Search.

Google employee

Quinn Emanuel Urquhart
& Sullivan, LLP
50 California St., 22nd Flr.
San Francisco, CA 94111
[phone]

00197.51709/4943866.1

Knowledge

Product marketing of
various aspects of
Google AdWords

Name
Jim Maccoun

Contact Information

Connection to Case
Google employee

Google patent
licensing practices and
policies relating to
Google's advertising
systems.

Google employee

Financial aspects of
Google's search
advertising systems.

Named inventor of
U.S. Patent Nos.
6,314, 420 and
6,775,664 and
employee and
director of I/P
Engine, Inc.

Conception and
reduction to practice of
U.S. Patent Nos.
6,314,420 and
6,775,664; prior art;
Plaintiff's theories of
infringement and
attempts to
commercialize the
patents-in-suit.

Donald M. Kosak Hilo, Hawaii

Named inventor of
U.S. Patent Nos.
6,314,420 and
6,775,664.

Conception and
reduction to practice of
U.S. Patent Nos.
6,314,420 and
6,775,664; prior art.

Ira V. Heffan

21 Harris Street #21
Brookline, MA 02446
[phone]

Attorney responsible
for prosecution of the
'420 Patent and the
'664 Patent.

Prosecution of the
applications resulting
in issuance of the
patents-in-suit.

Alexander R.
Berger

I/P Engine, Inc.
380 Madison Ave.
New York, NY 10017
[phone]

Employee and
director of I/P
Engine, Inc.

Plaintiff's theories of
infringement and
attempts to
commercialize the
patents-in-suit.

Yoav Roth

I/P Engine, Inc.
380 Madison Ave.
New York, NY 10017
[phone]

Director of I/P
Engine, Inc.

Plaintiff's theories of
infringement and
attempts to
commercialize the
patents-in-suit.

Sanjay Datta

Andrew K. Lang

00197.51709/4943866.1

May be reached through
counsel for GOOGLE.

Knowledge

Quinn Emanuel Urquhart
& Sullivan, LLP
50 California St., 22nd Flr.
San Francisco, CA 94111
[phone]
May be reached through
counsel for GOOGLE.
Quinn Emanuel Urquhart
& Sullivan, LLP
50 California St., 22nd Flr.
San Francisco, CA 94111
[phone]
West Chester,
Pennsylvania

3

Name

Contact Information

Connection to Case

Knowledge

Donald Stout

I/P Engine, Inc.
380 Madison Ave.
New York, NY 10017
[phone]

Director of I/P
Engine, Inc.

Plaintiff's theories of
infringement and
attempts to
commercialize the
patents-in-suit.

Jeremy J.
Bornstein

2605 Diamond St
San Francisco, CA 94131

Prior art witness

Prior art to the patentsin-suit, including U.S.
Patent Nos. 6,202,058
and 5,724,567

Daniel E. Rose

Cupertino, CA
[e-mail]
[phone]

Prior art witness

Prior art to the patentsin-suit, including U.S.
Patent Nos. 6,202,058
and 5,724,567

Kevin Tiene

21361 Milford Dr.
Cupertino, CA 95014

Prior art witness

Prior art to the patentsin-suit, including U.S.
Patent Nos. 6,202,058
and 5,724,567

Dulce B.
Ponceleon

3770 Ross Rd
Palo Alto, CA 94303

Prior art witness

Prior art to the patentsin-suit, including U.S.
Patent Nos. 6,202,058
and 5,724,567

Prior art witness

Prior art to the patentsin-suit, including Y.
Lashkari, FeatureGuided Automated
Collaborative
Filtering (Mass. Inst.
Tech. 1995)

Yezdezard
Lashkari

Frederick S.M.
Herz

Davis, WV

Prior art witness

Prior art to the patentsin-suit, including U.S.
Patent No. 5,835,087

Jason Eisner

1015 Spruce Street
Philadelphia, PA 19107

Prior art witness

Prior art to the patentsin-suit, including U.S.
Patent No. 5,835,087

Lyle Ungar

321 S. 20th Street
Philadelphia, PA 19103

Prior art witness

Prior art to the patentsin-suit, including U.S.
Patent No. 5,835,087

00197.51709/4943866.1

4

Name

Contact Information

Connection to Case

Knowledge

David Goldberg

Prior art witness

Prior art to the patentsin-suit, including D.
Goldberg et al., Using
Collaborative
Filtering to Weave an
Information Tapestry
(Communications of
the ACM Dec. 1992)

David Nichols

Prior art witness

Prior art to the patentsin-suit, including D.
Goldberg et al., Using
Collaborative
Filtering to Weave an
Information Tapestry
(Communications of
the ACM Dec. 1992)

Prior art witness

Prior art to the patentsin-suit, including D.
Goldberg et al., Using
Collaborative
Filtering to Weave an
Information Tapestry
(Communications of
the ACM Dec. 1992)

Prior art witness

Prior art to the patentsin-suit, including D.
Goldberg et al., Using
Collaborative
Filtering to Weave an
Information Tapestry
(Communications of
the ACM Dec. 1992)

Prior art witness

Prior art to the patentsin-suit, including P.
Resnick et al.,
GroupLens: An Open
Architecture for
Collaborative
Filtering of Netnews
(Proceedings of the
ACM 1994)

Brian Oki

493 Mill River Lane
San Jose, CA 95134

Douglas Terry

Paul Resnick

00197.51709/4943866.1

4344 North Quad
105 State St.
Ann Arbor, MI 48109

5

Name

Contact Information

Connection to Case

Knowledge

Neophytos
Iacovou

4646 Park Ave.
Minneapolis, MN 55407

Prior art witness

Prior art to the patentsin-suit, including P.
Resnick et al.,
GroupLens: An Open
Architecture for
Collaborative
Filtering of Netnews
(Proceedings of the
ACM 1994)

Mitesh Suchak

18 Harbor Ave., Apt. 201
Nashua, NH 03060

Prior art witness

Prior art to the patentsin-suit, including P.
Resnick et al.,
GroupLens: An Open
Architecture for
Collaborative
Filtering of Netnews
(Proceedings of the
ACM 1994)

Prior art witness

Prior art to the patentsin-suit, including P.
Resnick et al.,
GroupLens: An Open
Architecture for
Collaborative
Filtering of Netnews
(Proceedings of the
ACM 1994)

Peter Bergstrom

John Riedl

4-192 EE/CS Bldg.
200 Union St. SE
Minneapolis, MN 55455

Prior art witness

Prior art to the patentsin-suit, including P.
Resnick et al.,
GroupLens: An Open
Architecture for
Collaborative
Filtering of Netnews
(Proceedings of the
ACM 1994)

Shoshana Loeb

127 W. Chestnut Hill Ave.
Philadelphia, PA 19118

Prior art witness

Prior art to the patentsin-suit, including S.
Loeb, Architecting
Personalized Delivery
of Multimedia
Information
(Communications of
the ACM Dec. 1992)

00197.51709/4943866.1

6

Name

Contact Information

Connection to Case

Marko
Balabanovic

Knowledge

Prior art witness

Prior at to the patentsin-suit, including M.
Balabanovic et al.,
Fab: Content-Based,
Collaborative
Recommendation
(Communications of
the ACM March 1997)

Yoav Shoham

4058 Orme Street
Palo Alto, CA 94306
[phone]

Prior art witness

Prior at to the patentsin-suit, including M.
Balabanovic et al.,
Fab: Content-Based,
Collaborative
Recommendation
(Communications of
the ACM March 1997)
and U.S. Patent No.
5,855,015

Joshue Alspector

ECE Department
University of Colorado
Colorado Springs, CO
90918

Prior art witness

Prior at to the patentsin-suit, including J.
Alspector et al.,
Feature-based and
Clique-based User
Models for Movie
Selection: A
Comparative Study
(User Modeling and
User-Adapted
Interaction 7: 279–
304, 1997)

Aleksander
Koicz

1ECE Department
University of Colorado
Colorado Springs, CO
90918

Prior art witness

Prior at to the patentsin-suit, including J.
Alspector et al.,
Feature-based and
Clique-based User
Models for Movie
Selection: A
Comparative Study
(User Modeling and
User-Adapted
Interaction 7: 279–
304, 1997)

00197.51709/4943866.1

7

Name

Contact Information

Connection to Case

Knowledge

N. Karunanithi

31F-319B, Bellcore
445 South Street
Morristown, NJ 07960

Prior art witness

Prior at to the patentsin-suit, including J.
Alspector et al.,
Feature-based and
Clique-based User
Models for Movie
Selection: A
Comparative Study
(User Modeling and
User-Adapted
Interaction 7: 279–
304, 1997)

John S. Breese

Mercer Island, WA

Prior art witness

Prior art to the patentsin-suit, including U.S.
Patent No. 6,006,218

David E.
Heckerman

Bellevue, WA

Prior art witness

Prior art to the patentsin-suit, including U.S.
Patent No. 6,006,218

Eric Horvitz

Kirkland, WA

Prior art witness

Prior art to the patentsin-suit, including U.S.
Patent No. 6,006,218

Carl Kadie

Bellevue, WA

Prior art witness

Prior art to the patentsin-suit, including U.S.
Patent No. 6,006,218

Keiji Kanazawa

Seattle, WA

Prior art witness

Prior art to the patentsin-suit, including U.S.
Patent No. 6,006,218

Robert Cecil
Gore, Jr.

Pflugerville, TX

Prior art witness

Prior art to the patentsin-suit, including U.S.
Patent No. 5,794,237

Elizabeth D.
Liddy

Syracuse, NY

Prior art witness

Prior art to the patentsin-suit, including U.S.
Patent No. 5,963,940

Woojin Palk

Syracuse, NY

Prior art witness

Prior art to the patentsin-suit, including U.S.
Patent No. 5,963,940

Mary E.
McKenna

Syracuse, NY

Prior art witness

Prior art to the patentsin-suit, including U.S.
Patent No. 5,963,940

00197.51709/4943866.1

8

Name

Contact Information

Connection to Case

Knowledge

Ming Li

Jersey City, NJ

Prior art witness

Prior art to the patentsin-suit, including U.S.
Patent No. 5,963,940

Grant James
Ryan

Christchurch, NZ

Prior art witness

Prior art to the patentsin-suit, including U.S.
Patent No. 6,421,675

Shaun William
Ryan

Christchurch, NZ

Prior art witness

Prior art to the patentsin-suit, including U.S.
Patent No. 6,421,675

Craig Matthew
Ryan

Wellington, NZ

Prior art witness

Prior art to the patentsin-suit, including U.S.
Patent No. 6,421,675

Wayne Alistar
Monroe

Christchurch, NZ

Prior art witness

Prior art to the patentsin-suit, including U.S.
Patent No. 6,421,675

Del Robinson

Christchurch, NZ

Prior art witness

Prior art to the patentsin-suit, including U.S.
Patent No. 6,421,675

Ruben Ortega

May be reached through
counsel for GOOGLE.

Prior art witness

Prior art to the patentsin-suit, including U.S.
Patent No. 6,185,558

Prior art witness

Prior art to the patentsin-suit, including U.S.
Patent No. 6,006,222

Gary Culliss

Quinn Emanuel Urquhart
& Sullivan, LLP
50 California St., 22nd Flr.
San Francisco, CA 94111
[phone]
May be reached through
counsel for GOOGLE.
Quinn Emanuel Urquhart
& Sullivan, LLP
50 California St., 22nd Flr.
San Francisco, CA 94111
[phone]

In addition to the above-listed individuals, Google incorporates by reference the
individuals disclosed by I/P Engine, AOL, Gannett, IAC Search, and Target pursuant to Fed. R.
Civ. Pro. 26 as if set forth fully herein. Google reserves the right to disclose additional
individuals whom Google may use to support its claims or defenses based on information learned
during the course of this litigation.

00197.51709/4943866.1

9

B.

Documents In Google's Possession, Custody Or Control That Google May
Use To Support Its Claims Or Defenses (Fed. R. Civ. P. 26(a)(1)(A)(ii))

Google or its counsel at Quinn Emanuel Urquhart & Sullivan LLP is in possession of the
following categories of documents that Google may use to support its claims or defenses:


Documents describing the structure, characteristics, and operation of the accused
features of the Accused Instrumentalities



Documents and things consisting of or reflecting prior art relevant to the '420 and
'664 patents



Documents describing Google and its products and services



Documents describing sales, revenues and marketing of the Accused
Instrumentalities

Google reserves the right to assert a claim of privilege or immunity and withhold from
production any documents, whether or not included above, that are protected from discovery by
the attorney-client privilege, work product immunity or any other privilege or immunity. Google
further reserves the right to disclose additional documents that Google may use to support its
claims or defenses based on information learned during the course of this litigation.
C.

Computation Of Any Category Of Damages Claimed By The Disclosing
Party (Fed. R. Civ. P. 26(a)(1)(A)(iii))

At this time, Google only seeks to recover its reasonable attorneys' fees and costs and a
declaration that this case is exceptional. Google is not yet certain as to the amount of fees and
costs it will seek.
D.

Applicable Insurance Agreement (Fed. R. Civ. P. 26(a)(1)(A)(iv))

Google is unaware of any applicable insurance agreement.
In providing these initial disclosures, Google does not waive any objections, defenses or
applicable privileges. Google will supplement these disclosures to the extent required by the
Federal Rules of Civil Procedure and the Local Rules of the Court.

00197.51709/4943866.1

10

DATED: September 4, 2012

/s/ David A. Perlson
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]
Attorneys for Google Inc.

00197.51709/4943866.1

11

CERTIFICATE OF SERVICE
On September 4, 2012, I caused to be served the foregoing, by email, on Plaintiff's
counsel of record.

/s/ Emily C. O'Brien
Emily C. O'Brien
QUINN EMANUEL URQUHART &
SULLIVAN, LLP
50 California Street, 22nd Floor
San Francisco, California 94111
Telephone: [phone]
Facsimile: [phone]
[e-mail]
Counsel for Google Inc.

00197.51709/4943866.1

12