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

Filing 455

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

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

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

OPPOSITION TO DEFENDANT’S 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 premise their motion on the allegation that “I/P Engine’s damages
contentions are directed only to Google.” D.I. 308 at 1. This premise is not true, and
Defendants’ motion should therefore be denied. I/P Engine seeks damages from each of the
Defendants, as set forth in Dr. Becker’s expert report.

Ex. 1. Defendants’ mischaracterization of Dr. Becker’s
report is inexplicable.
Even if Defendants somehow misapprehended Dr. Becker’s report, Dr. Becker explicitly
testified during his deposition that he had calculated damages for all Defendants, including AOL,
IAC, Gannett, and Target:

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Q. Have you offered an opinion of an appropriate level of damages
against any party other than Google in this case?
A. (By Dr. Becker) I have -- the opinion that I offered is….
Q. Well, if, let’s say, the jury only found that Gannett was infringing, is
there a number that you could find -- that you could point to in your
report that would say this is the appropriate amount of the damages
against Gannett?
A. I believe that number is in there, yes.
Q. That’s in one of the charts or something?
A. It's in one of the exhibits to the report.
Ex. 2 at 7:13-8:7 (emphasis added). At trial, I/P Engine will introduce this evidence and seek a
judgment against each of these infringers in the amounts set forth in Dr. Becker’s report. On this
basis alone, Defendants’ motion must be denied.
Defendants imply that Dr. Becker’s analysis pertains only to Google because Google is
involved in, and collects the revenue from, each accused transaction. But Google’s involvement
in each transaction does not free the other defendants from liability. 1 For example, when Target
uses the accused Google systems to respond to a user’s query, both Target and Google have
infringed by using the patented invention. See 35 U.S.C. § 271 (“whoever without authority…
uses any patented invention… infringes the patent.”). Both Target and Google are therefore
liable for this act of infringement. The same is true for every other non-Google defendant. It is
well established that “a patent owner may obtain judgments against unauthorized makers users,
sellers, [etc.] as joint tort-feasors.” 7-20 Chisum on Patents § 20.03[7][b]. In Shockley v. Arcan,
Inc., 248 F.3d 1349, 1364 (Fed. Cir. 2001), the Federal Circuit rejected an infringer’s argument
that distributor and seller could not be jointly liable, stating that “other courts, including the

1

Defendants have filed a Daubert motion against Dr. Becker, but that motion does not challenge
his opinion that royalties that are due from AOL, IAC, Gannett, and Target.

2

Supreme Court, have held that parties that make and sell an infringing device are joint tortfeasors with parties that purchase an infringing device for use or resale…. This court agrees with
and adopts this rule.”
Defendants’ protestation that “seeking additional damages… would be double dipping” is
unfounded. Multiple recoveries for the same infringing act are not allowed, but multiple
infringers may be jointly and severally liable for their infringement. Shockley, 248 F.3d at 1364
(“Each joint tort-feasor is liable for the full amount of damages (up to a full single, recovery)
suffered by the patentee.”); Cooper Industries, Inc. v. Juno Lighting Inc., 1 USPQ2d 1313, 1315
(N.D. Ill. 1986) (“it is elementary that a plaintiff who possesses a valid cause of action against
two defendants may pursue both of them at once, even though one defendant is capable of
providing full relief”).
For both of these reasons, Defendants’ unsupported assertion (at 2) that “evidence or
argument about any damages claim against AOL, IAC, Gannett, and Target … would be
irrelevant under Rule 402 and inadmissible under Rule 403” is absurd. I/P Engine has damages
claims against all Defendants, jointly and severally.
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
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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 OPPOSITION
TO DEFENDANT’S 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, was served via
the Court’s CM/ECF 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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