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

Filing 438

Declaration re 433 Opposition, 432 Opposition, 434 Opposition, of Margaret P. Kammerud in Support of Defendants' Opposition to Plaintiff's 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, # 11 Exhibit K, # 12 Exhibit L, # 13 Exhibit M)(Noona, Stephen)

EXHIBIT L

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF VIRGINIA
NORFOLK DIVISION
__________________________________________
)
I/P ENGINE, INC.,
)
)
Plaintiff,
)
v.
)
Civ. Action No. 2:11-cv-512
)
AOL, INC. et al.,
)
)
Defendants.
)
__________________________________________)

PLAINTIFF I/P ENGINE, INC.’S UPDATED INITIAL DISCLOSURES
Plaintiff I/P Engine, Inc. (“I/P Engine”) makes the following updated initial disclosures
pursuant to Rule 26(a)(1) of the Federal Rules of Civil Procedure. These disclosures are based
upon I/P Engine’s investigations to date, which are ongoing. I/P Engine reserves the right to
correct, modify, and/or supplement these disclosures in accordance with Rule 26(e) of the
Federal Rules of Civil Procedure.
A.

IDENTIFICATION OF INDIVIDUALS PURSUANT TO RULE 26(a)(1)(A)

Pursuant to Rule 26(a)(1)(A), I/P Engine presently believes that the following individuals
are likely to have discoverable information that I/P Engine may use to support their claims or
defenses, excluding persons to be used solely for impeachment. Employees of I/P Engine,
employees of Innovative/Protect, Inc., employees of Vringo, Inc. and the inventors should be
contacted through I/P Engine’s counsel of record. The subjects of discoverable information for
which these individuals are identified are also provided.

Andrew K. Lang
Chief Technology Officer and Inventor
Vringo, Inc.
Subject(s) relating to: Conception and reduction to practice of the patents-in-suit, transfer
of rights under the patents-in-suit, and market place factors relating to the patents-in-suit.
Donald M. Kosak
Technical Consultant and Inventor
Innovate/Protect, Inc.
Subject(s) relating to: Conception and reduction to practice of the patents-in-suit, transfer
of rights under the patents-in-suit, market place factors relating to the patents-in-suit, and
development and use of the technology underlying the patents-in-suit.
Alexander Berger
Chief Operating Officer
Vringo, Inc.
Subject(s) relating to: Transfer of rights under the patents-in-suit to I/P Engine; Vringo’s
business.
Andrew Perlman
Chief Executive Officer
Vringo, Inc.
Subject(s) relating to: Vringo’s business.
Ira Heffan
TopCoder, Inc.
95 Glastonbury Blvd.
Glastonbury, Connecticut 06033
Subject(s) relating to: The filing and prosecution of the applications that issued as the
patents-in-suit.
Andrew Abramson
Greenberg Traurig LLP
200 Park Avenue
P.O. Box 677
Florham Park, New Jersey 07932
Subject(s) relating to: The filing and prosecution of the applications that issued as the
patents-in-suit.
One or more witnesses from AOL Inc.
770 Broadway
New York, New York 10003
Subject(s) relating to: Knowledge of the patents-in-suit, infringement, description,
design, development, operation, structure, and uses of the accused systems, marketing,
sales, and profits of the accused systems, the benefits associated with the use of the
accused systems, and the relationships with other defendants in connection with the
foregoing.

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One or more witnesses from Google Inc.
1600 Amphitheatre Parkway
Mountain View, California 94043
Subject(s) relating to: Knowledge of the patents-in-suit, infringement, description,
design, development, operation, structure, and uses of the accused systems, marketing,
sales, and profits of the accused systems, the benefits associated with the use of the
accused systems, and the relationships with other defendants in connection with the
foregoing.
One or more witnesses from IAC Search & Media, Inc.
555 12th Street, #500
Oakland, California 94607
Subject(s) relating to: Knowledge of the patents-in-suit, infringement, description,
design, development, operation, structure, and uses of the accused systems, marketing,
sales, and profits of the accused systems, the benefits associated with the use of the
accused systems, and the relationships with other defendants in connection with the
foregoing.
One or more witnesses from Gannett Company, Inc.
7950 Jones Branch Drive
Tysons Corner, Virginia 22107
Subject(s) relating to: Knowledge of the patents-in-suit, infringement, description,
design, development, operation, structure, and uses of the accused systems, marketing,
sales, and profits of the accused systems, the benefits associated with the use of the
accused systems, and the relationships with other defendants in connection with the
foregoing.
One ore more witnesses from Target Corporation
1000 Nicollet Mall
Minneapolis, Minnesota 55403
Subject(s) relating to: Knowledge of the patents-in-suit, infringement, description,
design, development, operation, structure, and uses of the accused systems, marketing,
sales, and profits of the accused systems, the benefits associated with the use of the
accused systems, and the relationships with other defendants in connection with the
foregoing.
I/P Engine reserves the right to rely upon information derived from additional persons as
such individuals come to its attention through further discovery and investigation, to rely upon
evidence obtained from any persons identified by the defendants, and to rely upon evidence
obtained from the foregoing individuals with respect to any subject.

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B.

DESCRIPTION OF DOCUMENTS PURSUANT TO RULE 26(a)(1)(B)

Pursuant to Rule 26(a)(1)(B), the following is a description of the documents, data
compilations, and tangible things, in the possession, custody, or control of I/P Engine or its
retained counsel, that I/P Engine presently believes may be used to support its claims or
defenses, excluding such documents, data compilations and tangible things to be used solely for
impeachment.


U.S. Patent Nos. 6,314,420 (“the ‘420 patent”) and 6,775,664 (“the ‘664 patent”)



The prosecution history files for the ‘420 and ‘664 patents



Conception, diligence, and reduction to practice documents related to the ‘420 and ‘664
patents



Documents relating to ownership of and rights under the ‘420 and ‘664 patents



Documents relating to the operation of defendants’ accused products, methods and
systems



Documents relating to revenue, sales, forecasts, costs and profits for defendants’ accused
products, methods and systems



Documents relating to licenses pertaining to the ‘420 and ‘664 patents or other inventions
relating to Internet marketing system(s) or service(s) that seeks to promote websites by
presenting search results on search engine result pages through the use of defendants’
accused products, methods and systems



Documents relating to defendants’ knowledge of the ‘420 and ‘664 patents
I/P Engine reserves the right to rely upon any additional documents obtained through

further discovery and investigation, and any documents identified or produced by others in this
litigation.

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C.

COMPUTATION OF DAMAGES

I/P Engine has incurred economic harm as a result of defendants’ infringement of the
patents-in-suit the amount of which cannot be calculated at this time.1 Pursuant to
35 U.S.C. § 284, I/P Engine seeks damages adequate to compensate it for defendants’
infringement of the asserted patents-in-suit in the form of at least a reasonable royalty to
compensate I/P Engine for defendants’ patent infringement, together with pre- and postjudgment interest and costs as fixed by this Court. I/P Engine may also seek increased damages
based on defendants’ willful infringement of the patents-in-suit. I/P Engine also seeks all other
damages, fees, and costs, to which it is entitled pursuant to applicable law, including without
limitation attorney’s fees pursuant to 35 U.S.C. § 285.
I/P Engine reserves the right to modify or change its damages theories and calculations as
appropriate in view of information to be discovered in this case and in view of further anticipated
expert opinions on the subject of damages.
D.

INSURANCE AGREEMENTS

I/P Engine is not aware of any insurance agreements pertinent to this litigation.

Dated: August 8, 2012

By:
/s/ Charles J. Monterio, Jr.
Jeffrey K. Sherwood
Frank C. Cimino, Jr.
Kenneth W. Brothers
Dawn Rudenko Albert
Charles J. Monterio, Jr.
DICKSTEIN SHAPIRO LLP
1825 Eye Street, NW
Washington, DC 20006

1

See Advisory Comm. Note to 1993 Amendment to Fed. R. Civ. P. 26(a)(1) (“[A] party would
not be expected to provide calculation of damages which, as in many patent infringements
actions, depends on information in the possession of another party or person.”).

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Telephone: [phone]
Facsimile: [phone]
Donald C. Schultz
W. Ryan Snow
CRENSHAW, WARE & MARTIN PLC
150 West Main Street
Norfolk, VA 23510
Telephone: [phone]
Facsimile: [phone]
Counsel for Plaintiff I/P Engine, Inc.

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CERTIFICATE OF SERVICE
I hereby certify that on this 8th day of August, 2012, the foregoing PLAINTIFF I/P
ENGINE, INC.’S UPDATED INITIAL DISCLOSURES, was served via email, 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/ Armands Chagnon
Senior Paralegal

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