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

Filing 451

Opposition to 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 I/P Engine, Inc.. (Attachments: # 1 Exhibit 1, # 2 Exhibit 2)(Sherwood, Jeffrey)

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF VIRGINIA
NORFOLK DIVISION
__________________________________________
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)
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Plaintiff,
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v.
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AOL, INC. et al.,
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)
Defendants.
)
__________________________________________)
I/P ENGINE, INC.,

Civ. Action No. 2:11-cv-512
REDACTED VERSION

PLAINTIFF I/P ENGINE, INC.’S OPPOSITION TO DEFENDANTS’ MOTION IN
LIMINE #4 TO PRECLUDE PLAINTIFF FROM OFFERING EVIDENCE OR
ARGUMENT RELATING TO DEFENDANTS’ CONDUCT DURING DISCOVERY OR
TO GOOGLE’S UNPRODUCED LICENSES
Generally speaking, I/P Engine agrees that, without prior leave of Court, evidence of
the parties’ conduct during discovery should not be referenced to the jury. In this case, however,
I/P Engine has pending certain sanctions motions that could give rise to circumstances where it
might be relevant to advise the jury of Google’s withholding of evidence. For example,
Google’s damages expert expressly criticized I/P Engine’s damages expert, claiming that he
should have relied upon evidence that Google improperly withheld until long after he submitted
his report. I/P Engine has moved to preclude that untimely evidence, which should end the
matter. See D.I. 277 (Plaintiff’s Second Motion for Sanctions). But, if for any reason
Defendants’ expert is permitted to offer that criticism, I/P Engine should be permitted to explain
Defendants’ discovery misconduct and the reason that I/P Engine’s expert did not analyze this
information in his initial report. Similarly, I/P Engine has a pending motion to preclude
Defendants from relying on source code that Google produced well after the close of fact

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discovery. See D.I. 282 (Plaintiff’s Third Motion for Sanctions). If that motion is denied, then
I/P Engine should be allowed to explain the circumstances in which such information was made
available to defend against unjust criticism of I/P Engine’s technical expert for not considering
information that was withheld by Defendants until after I/P Engine’s technical expert submitted
his report.
I.

DEFENDANTS’ MOTION IS TOO VAGUE
This Court has stated that “the purpose of a motion in limine is to allow the trial court

to rule in advance of trial on the admissibility and relevance of certain forecasted evidence.”
Gerrero v. Deane, 2012 U.S. Dist. LEXIS 125404 (E.D. Va. Sept. 4, 2012) (emphasis added).
Contrary to this instruction, Defendants have not identified any exhibits or specific evidence that
it believes is affected by the motion. Defendants’ motion seeks to vaguely preclude the use of
unspecified evidence because it may relate to Defendants’ discovery conduct. General
preclusion of such a broad range of evidence and argument, without determining its admissibility
by balancing its probative value against its prejudicial potential, is contrary to the balancing test
of Fed. R. Evid. 403.
In essence, Defendants ask this Court to provide a broad, blanket exclusion of
evidence and arguments without evaluating possible exceptions where the probative nature of the
evidence outweighs its minimal prejudicial effect or where it would be unjust to exclude such
evidence. However, this Court has previously refused to grant similar motions in limine that
seek broad exclusion of general evidence more appropriately reviewed on a specific basis. See
e.g. Torkie-Tork v. Wyeth, 2010 U.S. Dist. LEXIS 121804 (E.D. Va. Nov. 15, 2010) (refusing to
grant defendant’s motion to exclude “marketing and promotional material” in general because
“the category is too broad and vague, and it is appropriate to consider this objection in the
context of specific evidentiary submissions and deposition designations”). Based on the same
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reasoning, this Court should deny Defendants’ motion and review evidence related to discovery
conduct on a more specific basis as Defendants’ blanket exclusion is simply unjust.
II.

EXAMPLES OF RELEVANT AND ADMISSIBLE EVIDENCE THAT WOULD
BE WRONGLY EXCLUDED UNDER DEFENDANTS’ MOTION
I/P Engine can provide at least three specific examples of relevant and admissible

evidence that would be wrongly excluded under Defendants’ broad preclusion argument. These
examples illustrate the importance of denying Defendants’ motion to ensure that such
appropriate evidence and argument may be presented at trial or at least evaluated for relevance as
specific evidentiary submissions.
A.

Evidence and Argument Relating to Defendants’ Untimely Discovery
Responses Relating to Damages Data Should Be Admissible To Combat
Defendants’ Unwarranted Criticism of I/P Engine’s Damages Expert
Defendants waited until the very end of fact discovery to disclose critical categories

of damages-related evidence that were requested at the very beginning of this case.
Simultaneous with these last-minute disclosures, Defendants served an expert damages report
that criticized I/P Engine’s damages expert for relying on Defendants’ prior-produced
documents, interrogatory responses, and Rule 30(b)(6) testimony, instead of this new, previously
absent evidence. This egregious conduct has been more fully and appropriately briefed in
reference to Plaintiff’s Second Motion for Sanctions (D.I. 277).
Defendants are trying to have it both ways. They want to have their expert criticize
I/P Engine’s expert for not relying on data that Defendants concealed and which was not
available when I/P Engine’s expert prepared his report, but Defendants do not want I/P Engine to
point out the obvious rejoinder, which goes to their discovery misconduct. Defendants’ present
motion in limine seeks preclusion of any reference by I/P Engine to these late submissions, while
permitting Defendants to criticize I/P Engine’s expert for not using them in his initial expert

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report. If Defendants are permitted to open that door, then evidence or arguments regarding
Defendants’ failure to provide such key damages information prior to Plaintiff's service of its
expert damages report should be admissible at trial to combat unwarranted and unjust criticism
of I/P Engine’s damages expert.
B.

Evidence and Arguments Related to Defendants’ Untimely Production of
Source Code and Other Technical Discovery Responses Should Be
Admissible To Combat Defendants’ Probable Criticism of I/P Engine’s
Technical Expert
On September 14, ten days after the close of fact discovery, 50 days after I/P Engine

served its infringement expert report, and after the deposition of I/P Engine’s infringement
expert, Google produced more than 250 pages of source code that had never previously been
disclosed, despite I/P Engine’s repeated discovery requests dating from November 2011. The
same day, Defendants also served supplemental interrogatory responses asserting that the
previously concealed source code allegedly shows that, prior to 2010, the accused systems did
not include all features that I/P Engine has accused of infringement. Google’s misconduct in this
matter has been briefed more fully and appropriately in relation to Plaintiff’s Third Motion for
Sanctions (D.I. 283).
Once again, Defendants have produced information on an untimely basis, then
unjustly criticized I/P Engine’s expert for not considering the unavailable information.
Defendants’ present motion in limine would reward these tactics. For example, if this motion is
granted, and Defendants are permitted to attack I/P Engine’s technical expert for not addressing
this information, I/P Engine would be unable to explain Defendants’ sandbagging. This result is
unjust. If Defendants are permitted to rely on this untimely evidence, then I/P Engine should be
permitted to explain to the jury (or the Court should so advise the jury) of Defendants’ wrongful
actions.

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C.

I/P Engine Should Be Permitted To Cross-Examine Defendants’ Damages
Expert Regarding

This admission exposes a fundamental flaw in Dr.
Ugone’s reasoning, and legitimately calls into question his conclusion. Dr. Ugone has made a
sweeping generalization based upon a limited review of a small sample.
Defendants now seek to preclude this criticism. D.I. 306 at p. 3. Defendants assert
that this criticism could cause the jury to infer that Google was negligent in its production
responsibilities and assume discovery misconduct. Defendants thus would have this Court
preclude any evidence relating to this flaw in Dr. Ugone’s conclusion. Defendants again are
trying to have it both ways.
The
probative value of subjecting an expert to a vigorous cross-examination on such a relevant
analytical omission easily outweighs the small chance of prejudice to Defendants. Such
evidence should not be precluded from trial.
III.

CONCLUSION
For the foregoing reasons, Defendants’ motion in limine to broadly preclude all evidence

or arguments related to Defendants’ discovery conduct should be denied. In any event, for the
foregoing reasons, this Court should specifically allow evidence or arguments relating to (1)
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untimely discovery responses regarding damages information, which are necessary to explain
and defend against unjust criticism of the damages analysis provided by I/P Engine’s damages
expert, (2) untimely discovery responses regarding technical aspects of the case, which are
necessary to explain and defend against probable, unjust criticism of I/P Engine’s technical
expert and (3)

Dated: September 27, 2012

By: /s/ Jeffrey K. Sherwood
Donald C. Schultz (Virginia Bar No. 30531)
W. Ryan Snow (Virginia Bar No. 47423)
CRENSHAW, WARE & MARTIN PLC
150 West Main Street
Norfolk, VA 23510
Telephone:
[phone]
Facsimile:
[phone]
Jeffrey K. Sherwood (Virginia Bar No. 19222)
Frank C. Cimino, Jr.
Kenneth W. Brothers
Dawn Rudenko Albert
Charles J. Monterio, Jr.
DICKSTEIN SHAPIRO LLP
1825 Eye Street, NW
Washington, DC 20006
Telephone:
[phone]
Facsimile:
[phone]
Counsel for Plaintiff I/P Engine, Inc.

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CERTIFICATE OF SERVICE
I hereby certify that on this 27th day of September, 2012, the foregoing PLAINTIFF I/P
ENGINE, INC.’S OPPOSITION TO DEFENDANTS’ MOTION IN LIMINE #4 TO
PRECLUDE PLAINTIFF FROM OFFERING EVIDENCE OR ARGUMENT
RELATING TO DEFENDANTS’ CONDUCT DURING DISCOVERY OR TO
GOOGLE’S UNPRODUCED LICENSES, was served via the Court’s CM/ECF system, 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/ Jeffrey K. Sherwood

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