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

Filing 521

Opposition to 282 MOTION for Sanctions Plaintiff I/P Engine, Inc.'s Third Motion for Discovery Sanctions Regarding Untimely Discovery Responses (Public Version) filed by AOL Inc., Gannett Company, Inc., Google Inc., IAC Search & Media, Inc., Target Corporation. (Noona, Stephen)

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF VIRGINIA
NORFOLK DIVISION
I/P ENGINE, INC.
Plaintiff,
Civil Action No. 2:11-cv-512

V.
AOL, INC., et aL ,
Defendants.

DEFENDANTS' OPPOSITION TO PLAINTIFF'S "THIRD" MOTION FOR
SANCTIONS

I.

INTRODUCTION
As described in Defendants' Motion to Preclude Dr. Frieder from testifying regarding

untimely opinions, after 11 p.m. EDT on September 4, the very last day of fact discovery, and
less than 36 hours before Dr. Frieder's deposition, Plaintiff served an "Updated" Expert Report
for Dr. Frieder. Dr. Frieder's Updated Report identified, for the first time, four
that Dr. Frieder claimed supposedly meet the contentbased filtering limitation of the asserted claims. 1 These same were in the source code
Dr. Frieder reviewed July 13, nearly two weeks before his July 25 Original Report and almost six
weeks before his "Updated" report. Plaintiff had never previously pointed to these."
as a basis of its infringement theory, whether in an interrogatory response or otherwise.
Upon receipt of Dr. Frieder's "Updated" report, Google promptly investigated these

t. Google made available code
identifying when the newly relied upon

were first used just 10 days after it received

Plaintiffs tardy "Updated" Report, and promptly supplemented its interrogatory responses based
on this new information.
Through its "Third" Motion for Sanctions, Plaintiff now seeks to preclude Google from
relying on this source code that identifies when the

were first used. Even though

Google made this source code available just days after it first learned it was relevant, through Dr.
Frieder's tardy "Updated" report served in the last hour of fact discovery, Plaintiff seeks to
exclude this code because it was disclosed after the last day of discovery. In other words,
Plaintiff contends it is acceptable for it to disclose a new theory the last day of discovery; yet

Please refer to Section II.B of Defendants' Motion for Summary Judgment (D.N. 238) for
in AdWords.
an in-depth discussion regarding the use of

Google is not allowed to produce information relevant to this new theory at any time after the
close of the discovery. Plaintiff s view of discovery is untenable.
While Plaintiff claims prejudice and surprise from Google's production, these claims lack
merit for several reasons. To the extent Plaintiff claims any prejudice from the timing of
production, Plaintiff has only itself to blame. Again, it was not until literally the last hour of fact
discovery that Plaintiffs (tardy) "Updated" Report first made this historical code relevant.
Previously, Plaintiff had not pointed to any specific

as relevant to

infringement. Nor had Plaintiff ever requested historical revisions of code. Thus, there was no
had been introduced. Further, Plaintiffs

reason for Google to investigate when certain

unsupported claim that Google had "refused" to produce source code in November 2011 is flatly
untrue. Plaintiff first asked for code on June 27, just three weeks before its expert report was
due, and Google promptly provided it.
Moreover, Plaintiffs arguments themselves acknowledge that Plaintiff knew the
supposed importance of these
relied on the

for weeks before it disclosed its new theory that

on September 4. For example, Plaintiff states in its Introduction that la]s

a result of that review and analysis [of the source code], I/P Engine identified '

' in the

source code that are important to the infringement issues in this case. I/P Engine then served an
interrogatory requesting that Google identify all ME' used in Google's accused systems
for the period of alleged infringement (September 2005 to present)" so its expert "could rely on
Google's identification of those particular

for the full infringing period." (D.N. 283,

2.) (emphasis added). In other words, Plaintiff admits it knew the supposed importance of
particular

before it served its interrogatories on August 1. Yet, Plaintiff did not
until September 4, after Google responded

disclose the supposed importance of these

to these same interrogatories. And even though Plaintiff was apparently only interested in

2

"particular"

through its interrogatory, it instead made the vastly overbroad request for

all 'ME" used in Google's accused from September 2005 to present. (Id., 6-7
(Interrogatory Nos. 20-23).)
Plaintiff's claims of "surprise" are also without merit. Plaintiff argues in its Introduction
that "I/P Engine and its expert relied upon Google's discovery responses in formulating its
infringement opinions, as set forth in I/P Engine's expert report of July 25, 2012." (D.N. 283, 2.)
The interrogatories in which Google was allegedly supposed to provide information regarding
historical versions of code were not even served until August 1, after Dr. Frieder's July 25 report.
Any claim of surprise is further debunked by the fact that the code that Dr. Frieder had when he
. Thus, Plaintiff had no

served his July 25 report

. Also, Google's

basis to assume, as they apparently did,
witnesses, and even Dr. Frieder himself, repeatedly testified

Finally, Plaintiffs suggestion that Google should have known all along about the
importance of these

is not credible. Google has not, as Plaintiff contends, "long . .

. been aware that the... used in the source code would be relevant to the infringement
issues in this case, e.g., the

identified by Dr. Frieder's July 25 Report as representing

the content and collaborative data recited in the claims." (D.N. 283, 2.) Again, Dr. Frieder did
not identify any specific

in his July 25 Report. Rather, he made a blanket
. The first time

citation to 72 pages of source code
Plaintiff and Dr. Frieder pointed to any specific

was in his "Updated" report

in the last hour of fact discovery. Once Google became aware of the relevance of these
to Dr. Frieder's tardy theory, Google promptly produced the relevant code and updated
its interrogatories, just as it is supposed to do.

3

In sum, under the circumstances, Plaintiff's request for "sanctions" for Google's prompt
disclosure of relevant information once it became known to be relevant should be denied.
FACTUAL BACKGROUND

Throughout its brief, usually with no citation to the record or declaration testimony,
Plaintiff misstates the relevant history surrounding Plaintiffs requests for, and Google's
production of, source code. The actual history is important and shows why Plaintiffs motion
should be denied.
A.

Plaintiff Initially Requested Technical Documents, Not Source Code.

Plaintiff states "I/P Engine requested production of Google's technical documents in its
November 11, 2011 First Request for Documents. Google refused at that time to produce any
source code." (D.N. 283, 1.) This is not correct. Plaintiff provides no support for the assertion
that Google ever "refused" to provide source code. In fact, when the parties first were
negotiating production of technical documents, Plaintiff told Defendant it was not interested in
source code. (Declaration of Margaret P. Kammerud in Support of Defendants' Opposition to
Plaintiff's Third Motion for Discovery Sanctions ("Kammerud Dec."), ¶ 9.) Instead, the parties
stipulated that after Plaintiff provided preliminary infringement contentions and initial written
discovery on November 7, Google would make an initial production of technical documents
from its document repositories by December 7. (D.N. 145, 4.) Google provided these
documents, some 217,614 pages, on December 7, and fielded requests from Plaintiff for more
documents over the next several weeks. (See, e.g., D.N. 145, 4-5.)
B.

Plaintiff Delays Taking Google's Technical Rule 30(b)(6) depositions.

In its brief, Plaintiff suggests that Google was somehow responsible for Plaintiffs delay
in taking Google's Rule 30(b)(6) deposition. (D.N. 283, 6.) This too is incorrect. The Court
entered the parties' agreed Protective Order on January 23, 2012. (D.N. 85.) Yet, Plaintiff did

4

not notice Google's technical Rule 30(b)(6) deposition until April 2. In response to the notice,
Google offered to make its witness available on May 23. (D.N. 180-16, 7.) Plaintiff, however,
did not want to take this deposition at that time. Instead, Plaintiff indicated it wanted to take the
depositions of the non-Google defendants first. (Id.) Plaintiff did so even though Google
repeatedly made clear to Plaintiff that the corporate representatives for these non-Google
defendants would not know the working of Google's internal systems. (Id.) Plaintiff eventually
deposed Google's technical Rule 30(b)(6) witness on June 21. (Kammerud Dec., ¶ 13.)
C.

Plaintiff First Seeks Source Code Three Weeks Before Its Expert Report Is
Due.

Plaintiff requested source code for the first time on June 27. (D.N. 329-2.) Contrary to
Plaintiffs unsupported accusation that Google had previously "refused" to produce source code,
Plaintiff acknowledged in the letter that, "In the past, counsel has indicated that relevant source
code for this matter could be made available if it became necessary upon request by I/P Engine."

Plaintiff further stated "[Oven Mr. Alferness' testimony, Google's source code is now
necessary," and requested a narrow set of specific source code files listed in the letter.

(Id.

(emphasis added).) Thus, it was only after Mr. Alferness's testimony (which Plaintiff itself chose
to delay for a month), five months after the Protective Order was entered, almost seven months
after the completion of Google's technical repository document production, and three only weeks
before Plaintiffs Opening expert report was due, that Plaintiff first expressed any need for source
code in this case.2

2 In Dr. Frieder's deposition he indicated that he did not start work on his report until about
a month before it was due, and it was at that time he requested source code. (Declaration of Jen
Ghaussy in Support of Google's Opposition to Motions for Sanctions ("Ghaussy Dec."), Ex. M,
58:23-59:2.)

5

On July 10, Google notified Plaintiff that the source code Plaintiff requested would be
available for review beginning the next day, on July 11. (D.N. 329-1.) On the night of July 12,
Plaintiff requested access to the source code the following morning, despite the fact that the
Protective Order required Plaintiff to give notice of its intent to inspect the source code at least
three business days in advance. (Id.; D.N. 85, 6.) As a courtesy to Plaintiff, Defendants made
the source code available the next morning, July 13. (D.N. 329-1.) Dr. Frieder reviewed the
code on July 13. (D.N. 328-2, 3.)
As Dr. Frieder admitted at his deposition, the

he later identified in his

September 4 "Updated" Report appear in the source code that he reviewed on July 13. (D.N.
329-1; see also id., D.N. 329-7, 55-56.). Dr. Frieder testified that, based on this review, he had
in mind with respect to content filtering before he served his Original Report.
For example, Dr. Frieder testified that when he saw one of the

(D.N. 329-7,
209:5-211:4; 56:7-18 ("Q. Okay. So you had -- before you served your opening report, you had
an intuition that this comparison occurred through your view of the

, but you weren't

100 percent sure of that; correct? A. I wouldn't say it's an intuition. Intuition is a gut instinct.

I've been in the search world for now 20 years.
And therefore I was quite
confident that that was the case.") (emphasis added).)
Dr. Frieder further testified that from just studying the source code, he also believed
t. (Id.;

see also id. 54:21-55:6 ("Q. Do you recall how much time you spent looking at the
before your opening report? A. I recall that I looked at it a sufficient amount of time

6

to be able to see that there's clear examples of content matching and context evaluation. I — I
spent a significant amount of time in my report and part — a significant part of it as well looking
at the

and looking at the documents and the like. I cannot give you any specific

number.").)
D.

Dr. Frieder Serves His Opening Report Without Identifying Any

On July 25, Dr. Frieder served his Expert Report on Infringement ("Original Report").
, as

Despite already believing that these

detailed above, Dr. Frieder did not disclose them in this Original Report. 3 Rather, the Original
. In fact, the only place Dr. Frieder

Report makes no mention of any specific

references source code at all is in his claim chart as a "see also" in string cites: "Alferness
Deposition at 101:17-108:23; 110:2-118:21; 195:2-14; G-IPE-0241639-42; see also SC-G-IPE0000001-72; G-IPE-0223576-585." (D.N. 240-5, 7 (citation to source code in bold); id., 10, 13,

21, 24, 27, 32, 34, 36, 41, 43, 45.) Dr. Frieder did not even limit his citations to
he later pointed to appear, but rather cited to 72 pages of source code
. (Id.)
E.

Plaintiff Serves Interrogatories 20-23.

On August 1, on the very last day to serve written discovery, Plaintiff served
interrogatory requests 18-25, which included requests regarding source code. (Kammerud Dec.,
Ex. L.) In its brief, Plaintiff states that it served these interrogatories to discover information
regarding the

. Plaintiff argues:

As a result of that review and analysis [of the source code], I/P Engine identified
'1111111111" in the source code that are important to the infringement issues in this
3

As detailed in Defendants' Motion to Preclude Dr. Frieder's untimely opinions, Plaintiff
also delayed taking the deposition of Bartholomew Furrow, a Google engineer who worked on
the Smart Ads system and was knowledgeable about these templates, until after Dr. Frieder's
report. (D.N. 328, 5-6.)

7

case. I/P En ine then served an interrogatory requesting that Google identify of
all '
" used in Google's accused systems for the period of alle ed
Se tember 2005 to present
, so that I/P
Engine's expert could rely on Google's identification of those particularMill
for the full infringing period.
(D.N. 283, 2 (emphases added).) In other words, Plaintiff states that it knew the importance of
the

before it served its interrogatories on August 1. Yet, these interrogatories

were not limited to those

. Instead, they sought a narrative identification of every

existing iteration of all of the
Google served its objections to these interrogatories on August 20. (Kammerud Dec.,

If

12.) Google objected on the basis of undue burden and overbreadth, and that they sought
information that was irrelevant, immaterial, and not reasonably calculated to lead to the
discovery of admissible evidence. Google also objected on the basis that they were vague and
ambiguous, particularly with respect to the phrase
among others. (Kammerud Dec., Ex. N.). Despite the supposed importance of these
interrogatories to Plaintiff's case, Plaintiff made no effort to meet and confer with Google
regarding Google's objections. Indeed, Plaintiff expressed no concern about Google's objections
at all.
Defendants' responses to Interrogatories 20-23 were due September 4, the last day of
discovery. (Kammerud Dec., Ex. N.) Google responded to the requests by directing Plaintiff to
previously produced source code, which plainly indicates that the model with the
Dr. Frieder pointed to in his "Updated" Report that had been put in place until May 9, 2012.
(Kammerud Dec., ¶ 11.) Google also pointed to the testimony of Google employees, who had
uniformly testified that

8

F.

for the First Time

Plaintiff Discloses Its Reliance On The
Less than Hour Before Fact Discovery Closes.

Plaintiff argues "Dr. Frieder updated his infringement expert report to include additional
citations to evidence (deposition testimony and documents) that I/P Engine did not have when he
served his report," and that "Google has conceded that all of the new material in Dr. Frieder's
updated report post-dated his initial report." (D.N. 283, 7 n.3.) Once again, Plaintiff s assertions
are incorrect. It is surprising that Plaintiff would even make them given that Dr. Frieder himself
admitted that the

he first identified in his September 4 "Updated"

Report,4 were available to (and reviewed by) Dr. Frieder before his July 25 Original Report.
(D.N. 329-1; see also id., D.N. 329-7, 55-56.). But for whatever reason, Dr. Frieder and Plaintiff
chose to wait until September 4 to disclose their supposed importance to Plaintiff's infringement
case.
G.

Google Promptly Supplements to Account for Plaintiff's Tardy Theory.

Immediately after Plaintiff served its untimely Updated Report, Google researched
—identified for the first time in the September

internally to determine when these

4 "Updated" Report--were launched. (Kammerud Dec., ¶ 10.) Then, promptly upon learning of
Dr. Frieder's late-disclosed theories, on September 13, Google made available additional source
The same day, Google

code that showed these

supplemented its responses to interrogatories 20-23, which ask Google to

" (Id., Ex. L, 6-7.) Google supplemented its

4

Please refer to Section II.B of Defendants' Motion for Summary Judgment (D.N. 238) for

9

interrogatory responses as appropriate to identify the dates that the specific

, identified

by Dr. Frieder in his Updated Expert Report served on September 4, 2012, were introduced. (Id.,
Ex. 0, 9-11.)
On September 14, Plaintiff asked to meet and confer regarding Google's supplemental
production. During a meet and confer on September 17, Plaintiff did not express any issue with
Google's supplementation being incomplete. Nor did they ask for any further information,
source code, discovery, or anything else that might cure any supposed prejudice. Plaintiff only
requested that the source code be withdrawn completely. (Id., Ex. P.)
III. LEGAL STANDARDS

Rule 26(e)(1) states that a party must supplement its interrogatory responses in a timely
manner if it learns that a prior response was incomplete. Google timely supplemented its
discovery responses pursuant to Federal Rule of Civil Procedure 26(e).
Plaintiff bases its motion on its misreading of a recent Federal Circuit decision, which
does not, contrary to Plaintiffs suggestion, stand for the proposition that evidence properly
produced "during the last days of fact discovery" should be excluded. (D.N. 283, 3.) In Woods
v. DeAngelo Marine Exhaust, Inc., -- F. 3d --, 2012 WL 3683536, *4 (Fed. Cir. Aug. 28, 2012),

defendant discovered certain drawings it believed constituted prior art and wrote an email to
plaintiff disclosing the drawings on the last day of fact discovery. Defendant never
supplemented its response to plaintiffs prior art interrogatory to include reference to the
drawings. Woods, 2012 WL 3683536 at *4, *6. The Federal Circuit noted that the timeliness of
the document production and the failure to supplement the interrogatory response were two
distinct issues. Id., *6. The Federal Circuit actually disagreed with the district court's
determination that the documents were not timely produced. Although the Federal Circuit
upheld the trial court's exclusion of the documents, its decision was explicitly based not on

an in-depth discussion regarding the use of

10

timeliness grounds (the production was timely), but on Defendant's failure to ever supplement its
interrogatory response. Id., *7-8.
The Federal Circuit found that defendant met its Fed. Rule C. P. 26(e) supplementation
obligations with respect to production of the drawings, because the rule
requires only that parties supplement prior discovery responses in a timely
manner if the party learns that in some material respect the disclosure or response
is incomplete or incorrect ... The rule prohibits parties who are aware of their
deficient response from holding back material items and disclosing them at the
last moment.
Id., *7 (quotations omitted) (emphasis in original). Like the defendant in Woods, Google met its
discovery obligations by promptly producing documents upon learning of their relevance.

Unlike the defendant in Woods, however, Google also fulfilled its discovery obligation to
supplement its interrogatory responses. Thus, Plaintiffs reliance on Woods is misplaced.
Plaintiffs reliance on the five-factor test in Southern States is also not appropriate. This
test is used to determine "whether a party's nondisclosure of evidence was substantially justified
or harmless" under Federal Rule of Civil Procedure 37(c). Southern States Rack and Fixture,
Inc. v. Sherwin-Williams Co., 318 F.3d 592, 596-97 (4th Cir. 2003). The Rule 37(c) exclusion
rule applies where a party has failed to make the appropriate disclosures or to supplement
discovery responses under Federal Rules of Civil Procedure 26(a) and (e). Fed. R. Civ. P.
37(c)(1). Here, Google has made all appropriate disclosures and has timely supplemented its
discovery responses, and so the exclusionary rule, and the Southern States five-factor test, are
inapplicable.

11

IV. ARGUMENT
A.

Google Supplemented Its Source Code and Interrogatories Immediately
After Receiving the New Information in Dr. Frieder's Tardy "Updated"
Report.

Plaintiff argues that "[n]othing has transpired post-discovery that would justify Google's
production of this new source code" and that "Dr. Frieder's opinions and conclusions did not
change in any way." (D.N. 283, 7.) Plaintiff further states that Dr. Frieder had updated his
report to include citations to evidence "that FP Engine did not have when he served his report."
(Id.) But as Plaintiff itself acknowledges, Plaintiff did already have the source code that Dr.

Frieder refers to specifically for the first time in his "Updated" report. Yet it was not until 11:06
pm EDT on September 4, 56 minutes before the close of fact discovery, that Plaintiff first
referred to the

in Dr. Frieder's unauthorized "Updated" Report. (D.N. 328, Ex. 2.)

Plaintiff further admits that "[a]s a result of that review and analysis [of the source code],
I/P Engine identified 1.1.s m the source code that are important to the infringement issues
in this case. UP Engine then served an interrogatory requesting that Google identify of all [sic]
'Mll" used in Google's accused systems for the period of alleged infringement (September
2005 to present)." Plaintiff claims to have requested this information so its expert "could rely on
Google's identification of those particular III=11 for the full infringing period." (D.N. 283, 2.
(emphasis added)). This argument is telling in several respects.
First, Plaintiff clearly admits it knew the importance of the

before it served

its interrogatories on August 1. (Kammerud Dec., Ex. L.) Yet, it did not disclose this supposed
importance until September 4, after Defendants had already responded to Plaintiffs
interrogatory. Moreover, Plaintiff said it was seeking through these interrogatories to determine
whether the particular

that I/P Engine identified has been used by Google since 2005.

Yet, Plaintiff asked Google to identify of all 11111111." used in Google's accused systems for

12

the period of alleged infringement (September 2005 to present). (Id., Interrogatory Nos. 20-23.)
In other words, while Plaintiff obviously had particular

in mind when serving its
. Gathering

interrogatories, it did not identify any of them, but asked for all

used in Google's accused systems over the past seven years would

information on all

be a prohibitively difficult, time-consuming, and burdensome process, and Google properly
objected to the requests on that basis. (Kammerud Dec., Ex. N, 9-13.) Plaintiff has raised no
issues with these objections.
Despite having prior knowledge of till= he wanted to rely on, Dr. Frieder's
Updated Report identified, for the first time, aspects of the accused products that supposedly
. The basis for Dr. Frieder's

meet the

new opinion was actually information he reviewed as early as July 13, nearly two weeks before
his Original Report was served on July 25. Upon receipt of Dr. Frieder's updated expert report,
Google promptly investigated the

the updated report cited to. This investigation

revealed that
. Google then promptly made the newly relevant code available just
10 days after Plaintiffs "Updated" Report, and supplemented its interrogatory responses based
on this code at the same time.
Under the circumstances, Google's production was timely, and Plaintiff can claim no
legitimate prejudice from Google's prompt supplementation of discovery based on Plaintiffs new
theory disclosed less than an hour before discovery closed.
B.

Plaintiffs Allegations of "Surprise" Are Without Merit.

Plaintiff argues that '
(D.N. 283, 2), and that "I/P Engine deposed three
Google engineers about the source code and at no time during those depositions did Google's

13

engineers testify that the source code was incomplete or that different relevant source code
existed." (D.N. 283, 9.) This is simply not true. First,
. (Kammerud Dec., ¶
11.) Moreover, Defendants' witnesses testified again and again

For example, Mr. Alferness testified: '

." (D.N.
241-11, 25:6-10.) Mr. Furrow similarly testified when asked whether

." (Kammerud Dec., Ex. Q, 149:171111111" in the source code produced, he said

25.) And when asked ``

." The following colloquy ensued:

Yet, Plaintiff never asked for the source code for these prior models.
Plaintiffs expert also recognized that the

change over time:

(Id., Ex. M, 297:24-298:3, see also id.

22:3-7 (emphasis added).)

14

Plaintiff also argues "I/P Engine and its expert relied upon Google's discovery responses
in formulating its infringement opinions, as set forth in I/P Engine's expert report of July 25,
2011 [sic]." (D.N. 283, 2.) This makes no sense. The interrogatories on which Plaintiff bases
its motion were not even served until August 1, 2012, after Dr. Frieder's Opening Report.
C.

Plaintiffs "Harm" Arguments Are Based On A False Premise.

Plaintiff sets forth a parade of horribles based on the supposed "harm" from the
supplementation of these interrogatories and production of source code, claiming that the harm
"cannot be mitigated in any meaningful way" with "trial less than a month away." (D.N. 283, 8.)
It claims that if the Court permitted the supplementation, Plaintiff would have to analyze the new
information, depose additional Google engineers, and update its expert report. (Id.) This is
disingenuous. The situation would have been no different had Google provided the identical
information on September 4. Plaintiff would no doubt have still have complained that Google's
information was somehow tardy for the reason that Plaintiff does now—i.e., this information is
damaging to Plaintiffs case. That, however, is not the type of prejudice that justifies the drastic
relief Plaintiff seeks.
Plaintiff also argues that "I/P Engine cannot fully evaluate the importance of the new
evidence because it has not had a sufficient opportunity to review and analyze Google's new
source code nor has it even received the remainder of the code requested by its interrogatory."

(Id., 10.) However, Plaintiff could simply have looked at the new code and seen that, as
described in Google's supplemented interrogatory response,
identified by Google. There is no reason Plaintiff could not do
that in a very short time after receiving the code.
Moreover, given that Plaintiff did not serve its interrogatory seeking historical
information until the last possible day to serve written discovery, Plaintiff knew it wouldn't get

15

an answer until the very last day of fact discovery. Google produced the source code Plaintiff
complains about just ten days after being informed of its alleged relevance. (D.N. 240-7.)
D.

Plaintiff's "Preclusion" Arguments Rely On A False Premise.

Plaintiff argues that "[p]reclusion is appropriate under Rule 16(f) as Google's production
violates this Court's Rule 16 Scheduling Order because the production was clearly after the close
of fact and expert discovery." (D.N. 283, 3.) But Google could not have known which
were relevant until Plaintiff submitted the Updated Report, which was done in the last few
minutes of fact and expert discovery. Given that Plaintiff served its interrogatories such that
responses would be due the last day of discovery, Plaintiff ensured that any supplementation
would have to be after the close of discovery. Apparently, however, under Plaintiffs view, a
discovery response due the last day of discovery could never be supplemented.
Plaintiff also argues that:
Google cannot credibly ar ue that it was unaware — or did not understand — the
significance of the
information, nor can it argue that it was somehow
exempt from answering I/P Engine's interrogatory based on a lack of
understanding about the significance of the information. Google long has been
aware that the
used in the source code would be relevant to the
infringement issues in this case, e.g., the identified by Dr. Frieder's
July 25 Report as representing the content and collaborative data recited in the
claims.
(D.N. 283, 2.) This too is incorrect. Again, Dr. Frieder did not identify any
in his July 25 Report. Instead, he pointed to 72 pages of source code in
. (See, e.g., D.N. 240-5, 7, 10, 13, 21, 24, 27, 32, 34, 36, 41, 43, 45

(intermittently citing "SC-G-IPE-0000001-72" within a string cite).) The first time he pointed to
any specific

was in his "Updated" report served a few hours after Googie

responded to Plaintiffs interrogatories. (D.N. 240-7.)
Plaintiff further argues, without citation, that "[p]reclusion also is consistent with this
Court's comments during the hearing on September 18, 2012." (D.N. 283, 3.) This is not the
16

case. In fact, at the September 18 hearing, the Court indicated that one of the reasons it denied
Plaintiffs previous motion for sanctions was that Defendants had disclosed the prior art at issue
once they were aware of its relevance. (Kammerud Dec., Ex. R, 37:21-23. ("I believe that
Google here developed an understanding with respect to the necessity of disclosing the prior art,
[and] they did so in a timely manner under Rule 26(e).")) The same is true here. Google
supplemented its responses almost immediately after Plaintiff filed the untimely Updated Report
that referenced specific

from documents Google had produced before the original

report was filed.
V. CONCLUSION

For the foregoing reasons, Defendants respectfully requests that the Court deny Plaintiff s
"Third" Motion for Discovery Sanctions Regarding Untimely Discovery Responses.

17

DATED: October 1, 2012

/s/ Stephen E. Noona
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]

Counsel for Google Inc., Target Corporation,
IAC Search & Media, Inc., and
Gannett Co., Inc.

By: /s/ Stephen E. Noona
Stephen E. Noona
Virginia State Bar No. 25367
KAUFMAN & CANOLES, P.C.
150 W. Main Street, Suite 2100
Norfolk, VA 23510
Telephone: [phone]
Facsimile: [phone]
Robert L. Burns
FINNEGAN, HENDERSON, FARABOW, GARRETT &
DUNNER, LLP
Two Freedom Square
11955 Freedom Drive
Reston, VA 20190
Telephone: [phone]
Facsimile: [phone]
Cortney S. Alexander
FINNEGAN, HENDERSON, FARABOW, GARRETT &
DUNNER, LLP
18

3500 SunTrust Plaza
303 Peachtree Street, NE
Atlanta, GA 94111
Telephone: [phone]
Facsimile: [phone]
Counsel for Defendant AOL, Inc.

19

CERTIFICATE OF SERVICE
I hereby certify that on October 1, 2012, I will electronically file the foregoing with the
Clerk of Court using the CM/ECF system, which will send a notification of such filing (NEF) to
the following:
Jeffrey K. Sherwood
Kenneth W. Brothers
DICKSTEIN SHAPIRO LLP
1825 Eye Street NW
Washington, DC 20006
Telephone: [phone]
Facsimile: [phone]
[e-mail]
[e-mail]
Donald C. Schultz
W. Ryan Snow
Steven Stancliff
CRENSHAW, WARE & MARTIN, P.L.C.
150 West Main Street, Suite 1500
Norfolk, VA 23510
Telephone: [phone]
Facsimile: [phone]
[e-mail]
[e-mail]
[e-mail]

Counsel for Plaint, I/P Engine, Inc.

/s/ Stephen E. Noona
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]

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