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

Filing 468

Declaration re 466 Memorandum in Support, of Emily C. O'Brien in Support of Defendants' Memorandum in Support of Their Opposition to I/P Engine, Inc.'s Motion to Exclude Opinions and Testimony of Keith R. Ugone 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)(Noona, Stephen)

EXHIBIT E

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STATES UNITED DISTRICT COURT

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EASTERN DISTRICT OF VIRGINIA

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NORFOLK DIVISION

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I/P ENGINE, INC.,
Plaintiff,

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v.

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

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AOL, INC., et al.,

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Defendants.
x

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CONFIDENTIAL - OUTSIDE COUNSEL ONLY

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Videotaped Deposition of KEITH RAYMOND UGONE, Ph.D.

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Dallas, Texas

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Friday, September 14, 2012

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9:02 a.m.

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Job No. 26021

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Pages: 1 - 237

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Reported by: Tami Lewis, RMR, CRR, CSR

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patent owner not to have a commercialized product,

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right?

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A. Correct.

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Q. And they would still have the right to license

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the patent?

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A. They have the right to, my understanding as a

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layperson, to exclude others from using the claim

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teachings of the patent or to license or to do -- it's

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their property. They can do as they see fit.

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Q. So they can enforce it; they can stick it on a
shelf and ignore it?

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A. Yes.

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Q. In your report, you don't attempt to compare --

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strike that.

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In your report, you don't attempt to

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recalculate the

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do you?

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lump sum into a running royalty,

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A. I haven't done what I'll -- I haven't done the
reverse of a present value calculation.

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Q. Now, based on my reading of your report, so

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there were two licenses that you use to get to your

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range. If that's inaccurate, you can tell me, but it's

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, right?
A. Where I need to quibble just a little bit if,
you don't mind, is that there were many, many different

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inputs. Two of them happen to be license agreements.

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There were some offers to sell or offers to purchase.

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There was the bidding process. There was the actual

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sale. There's everything else in my report, so I would

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never describe it as I've answered previously that those

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two licenses in and of themselves don't give the

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bookends to the range.

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Q. You're not --

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A. But factually,

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I believe two of those inputs

were license agreements.
Q. Okay. You're not relying on any of the other

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02:48:46
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Google licenses or acquisition agreements as comparable,

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are you?

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MR. NELSON: Objection, vague.

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A. And I don't think you meant this, but I need to

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preserve something I said earlier that a lot of those

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agreements helped also in combination with deposition

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testimony and formed my opinion with respect to Google's

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strong preference for a lump sum.

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Q. (BY MS. ALBERT) Right.

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A. But with respect to some of the values and the

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indicators of value, I'm not using those in the same

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way.

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Q. Right. Okay. So let's talk about the

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patent for a moment. It's not your opinion that the

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patent covers a comparable technology, is it?

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A. You know, I want to be a little careful here

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because I think the -- the

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used in the same way as the -- I'm sorry. The

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agreement is not being used in the same way as the

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agreement is what I meant to say.

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patent is not being

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Q. And how are you using it differently?

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A. Yeah, whereas I've received guidance and input

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that the

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But one

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way I was looking at that -- and this is, you know,

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where I've said this numerous times that it's a

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combination of a lot of different things I'm looking at.

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I understand that Google purchased, you know, •

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in combination with the

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other indicators of value.
Q. What are the other indicators of value?

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A. Those are the ones that I've been talking

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about. I mean, we can talk about everything that's in

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my report.

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Q. Oh, you're not talking about with respect to

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the

agreement?

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A. I missed your question.

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Q. You're not referring to other indicators of

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value that you found in the
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agreement --

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Correct.

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Q. -- you're talking about --

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A. In my report. The things I've been saying over

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in the --

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Q. Okay.

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A. So it was that sense that I used it, that there

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was sort of almost a -- I hate to say a triangulation

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because it was more than three, but if you take all the

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inputs and you look at the other indicators of value I

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have that that was consistent with it. It was not

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inconsistent with those other indicators of value. So

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that's the subtlety of how I'm using that is a little

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bit different than the --

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been a situation where if one wanted a point estimate

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and one wanted to look at the indicators of value,

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think one could have said the answer's roughly in the

. There could have

I

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but I was also looking at some of those other -- the

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offers to purchase the Lycos portfolio that included the

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patents-in-suit, the actual purchase of the patent

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family associated with the patents-in-suit, and then

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there was thin...111E11111111M -- I'm sorry, the

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that was consistent with
those ranges of those other indicators of value.
So that upper end was really a combination
of all of those rather than just saying here's the
as a -- as an anchor for that upper

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range. So I did not just take that

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for the upper range.

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is the anchor

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Q. Well, the fact that a purchase agreement that

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concerns noncomparable technology is sold in a range

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that you say is comparable to other indicators does not

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make that sale relevant to the patents-in-suit, does it?

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A. It does as an indicator of -- we know that -- i

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don't want to keep repeating myself, but there was the

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Lycos, that bidding process and everything that led up

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to that. There was the agreements that -- the patent

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purchase and patent licensing agreements that Google

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provided. I believe this --

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I'm not a technical

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person, so I'm not going to opine as to the technology,

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whether it's comparable or not.

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Q. Well, let's stop there for a second.

You do

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not assert in your report that it's a comparable

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technology, right?

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A. Right.

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Q. Okay.

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A. So I did not go beyond what the testimony in

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the record was.

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Q. And Dr. Ungar is not in his report asserting

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that the technology in

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patents-in-suit, right?

is comparable to the

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A. That's correct. He did not assert that.

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Q. Okay. I just want to make sure that's clear.

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So then other than the fact that there are other ex post

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indicators of price or an amount, how is

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in your analysis to determine the value of the

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patents-in-suit?

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relevant

A. Well, a couple of things.

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Q. The number of patents that are licensed is not

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necessarily an indicator of the value as reflected in

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the purchase price, is it?

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A. Just ask the question again.

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Q. Well, the number of patents that somebody is

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purchasing is not necessarily reflective of the value?
A. And let me tell you where I need the

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clarification. Are we just talking generally right now,

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or are we talking in a hypothetical negotiation? I

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need a little --

just

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Q. No, I'm talking generally.

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A. Okay.

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Q. I mean, the value of a patent isn't

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necessarily in the number of patents you're purchasing

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or licensing, right?

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A. The best I can tell you is my thought processes

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when you ask the question. To the extent that you have

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more patents and maybe that gives broader coverage and

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there's less opportunity for a noninfringing

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