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

Filing 606

Response to 206 MOTION to Seal Portions Of Google Inc.s Brief In Support Of Motion To Compel And Various Exhibits To The Declaration Of Jen Ghaussy in Support Thereof Notice of Filing Response to Agreed Order to Maintain Portions of Documents Under Seal filed by AOL Inc., Gannett Company, Inc., Google Inc., IAC Search & Media, Inc., Target Corporation. (Attachments: # 1 Exhibit H (Undreacted, Public Form), # 2 Exhibit I (Unredacted, Public Form), # 3 Exhibit L (Unredacted, Public Form), # 4 Exhibit M (Unredacted, Public Form), # 5 Exhibit N (Unredacted, Public Form), # 6 Exhibit P (Unredacted, Public Form), # 7 Exhibit Q (Unredacted, Public Form), # 8 Exhibit R (Unredacted, Public Form), # 9 Exhibit S (Undredacted, Public Form), # 10 Exhibit T (Unredacted, Public Form), # 11 Exhibit U (Unredacted, Public Form))(Noona, Stephen)

EXHIBIT L

quinn emanuel

trial lawyers | san francisco

50 California Street, 22nd Floor, San Francisco, California 94111-4788 | TEL: [phone] FAX: [phone]

July 20, 2012
Charles Monterio
[e-mail]
Confidential-Attorneys’ Eyes Only
Re:

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

Dear Charles:
I write to follow up on yesterday’s meet and confer in the above referenced matter and in
response to your email sent late last night.
First, we discussed logistics for the depositions of I/P Engine (IPE), Innovate/Protect (IPI) and
Hudson Bay. After discussing internally, your proposal is to have one deposition of IPE and IPI,
and then a second deposition the same day of Hudson Bay, due to confidentiality concerns.
Given that the witness is the same for all three entities, and we are having the deposition on one
day, we suggest having only one deposition transcript for all three entities. To the extent any
confidential information related to Hudson Bay, IPE or IPI will be discussed, in-house counsel
for those entities can step out of the room as needed. It makes little sense to ask the same
questions multiple times from the same witness.
You confirmed that July 31 would work for the deposition of Lycos in Boston. We agreed to
confirm a location for that deposition. Finally, you agreed to check with Vringo regarding
available dates for deposition in August sufficiently in advance of the deadline for rebuttal expert
reports. You also agreed to reconfirm that Vringo has no availability for deposition the week of
July 30.
Second, we discussed the objections and responses to the 30(b)(6) depositions to IPE, IPI,
Hudson Bay, and Vringo.
quinn emanuel urquhart & sullivan, llp
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IPE
Topic No. 1: This topic seeks “All facts and circumstances regarding any search, analysis,
investigation or opinion regarding the patents-in-suit and any Related Applications, including
without limitation any search, analysis, investigation or opinion regarding patentability,
unpatentability, enforceability, unenforceability, validity, invalidity, infringement,
noninfringement, meaning, interpretation, construction or scope of the patents-in-suit or Related
Applications.” Plaintiff agreed in response to provide a corporate designee who will testify
generally “to the fact and circumstances regarding any non-privileged search, analysis,
investigation or opinion regarding the patentability, enforceability or infringement of the patentsin-suit.” You stated that you did not believe Plaintiff needed to be prepared to testify regarding
“meaning, interpretation, construction or scope of the patents-in-suit” because claim construction
had already been decided by the Court. You further stated that you did not include “validity” in
the subject matter for which you would provide a witness, because you believe validity is
subsumed within Topic No. 2, for which you agreed to provide a witness.
Topic No. 6: This topic seeks “All facts and circumstances relating to how and when the Owners
of the Patents-in-Suit and/or the inventors first became aware of each Accused Product; any and
all analyses, examinations or investigations of each such product conducted by or for the Owners
of the Patents-in-Suit and/or the inventors; and an identification of documents (by Bates number)
and persons with information relating to such analysis, examination or evaluation.” In response,
Plaintiff agreed to provide a corporate designee “to testify generally to the facts and
circumstances relating to how and when I/P Engine first became aware of each Accused Product,
and any and all infringement analyses, examinations or investigations of each such product
conducted by or for I/P Engine.” I stated that IPE should be prepared to testify regarding any
analyses of the Accused Products, not just infringement analyses.
You also stated that IPE is the current owner of the patents-in-suit, and can only testify regarding
its knowledge, not the knowledge of any prior owners of the patents-in-suit. I stated that if IPE
has any information regarding prior owners’ knowledge of the Accused Products, their analyses
or each such product, etc., then IPE should be prepared to testify about that information at the
deposition. For example, if IPE knows of analyses done by Lycos related to AdSense for Search,
IPE’s corporate designee should be prepared to testify regarding this knowledge. You stated that
we could ask these questions of the corporate designee, but that is insufficient. IPE should be
prepared to testify fully on this topic, to the extent it has knowledge. Please confirm that IPE
will be so prepared.
Plaintiff similarly narrowed its response to Topic Nos. 8, 9, and 10. Again, please confirm that
IPE will be prepared to testify regarding IPE’s knowledge and the knowledge of any prior owner
of the patents regarding these topics, to the extent such information is in the possession, custody
or control of IPE.

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Topic No. 9: This topic seeks “All facts and circumstances relating to any pre-litigation contact
between the Owners of the Patents-in-Suit or the inventors and Defendants.” Plaintiff limited its
response to pre-litigation contact “relating to the Accused Products and the patents-in-suit.” I
stated that IPE should be prepared to testify regarding any pre-litigation contact between IPE and
Defendants. You stated that we could ask questions, but that the corporate designee would only
be prepared as noticed in your response. In further follow up, is Plaintiff aware of any prelitigation contact at all? That would seem to resolve any potential dispute here.
Topic No. 13: This topic seeks “Licensing procedures and policies of Lycos from 2003-2006.”
You confirmed that IPE has no knowledge of Lycos’ licensing procedures and policies. You
similarly confirmed that IPI, Hudson Bay and Vringo have no knowledge of Lycos’ licensing
procedures and policies.
Topic No. 14: This topic seeks “Any valuation of the patents-in-suit.” Plaintiff agreed to
produce a corporate designee to testify generally to “I/P Engine’s knowledge of valuations of the
patents-in-suit conducted by or on behalf of I/P Engine.” I noted that this response is too narrow.
IPE’s witness should be prepared to testify regarding any valuation of the patents-in-suit of
which IPE is aware, regardless of whether it was conducted by or on behalf of IPE. You
maintained your response.
Defendants request that IPE reconsider this response, and agree to provide a witness fully
prepared to testify regarding its knowledge of any valuation of the patents-in-suit. Again,
however, if Plaintiff can confirm that it is aware of no other such valuations, then perhaps this
could resolve any potential dispute.
Topic No. 15: This topic seeks “Agreements between Plaintiff and any other party concerning
the subject matter disclosed in the patents-in-suit.” Plaintiff agreed to produce a corporate
designee to testify generally “to any agreement between I/P Engine and any other party
concerning the patents-in-suit, subject to any confidentiality obligations, privileges and
immunities.” I stated that this response is too narrow. For example, under this response IPE’s
witness would not be prepared to testify regarding any agreements related to the “Lycos Patents”
acquired by IPE, but not asserted in this case. You stated that you were not aware of any such
agreements, but would be willing to consider a narrower topic. Accordingly, Defendants
propose the following revision to Topic No. 15:
Agreements between Plaintiff and any other party concerning the patents-at-issue, the Lycos
Patents, or any other patents related to search advertising technology and/or
collaborative/adaptive search engine technology.
Please confirm that IPE will provide a witness fully prepared to testify regarding this amended
topic.
Topic No. 17: This topic seeks “Plaintiff’s corporate structure and status, including without
limitation its organizational structure, ownership structure, shareholders, general partners,
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limited partners, investors, decision makers, and past and present employees.” IPE agreed to
testify generally to “I/P Engine’s corporate structure, organizational structure, and its past and
present employees.” You stated that IPE has only one shareholder, IPI, and thus did not have
any general partners, limited partners, or investors.
Topic No. 20: This topic seeks “The relationship between I/P Engine and Hudson Bay,
including but not limited to Hudson Bay’s investment in I/P Engine, Hudson Bay’s interest in the
patents-in-suit, Hudson Bay’s role in the management of I/P Engine, the formation of I/P Engine,
and the location and storage of any documents related to I/P Engine or the patents-in-suit.” IPE
refused to provide a witness regarding Hudson Bay’s role in “the formation of I/P Engine” and
“the location and storage of any documents related to I/P Engine or the patents-in-suit.” You
stated that the latter was subsumed within Topic No. 19, for which you were providing a witness.
You confirmed that you were not providing a witness to testify about the former. This is not
acceptable. Please explain Plaintiff’s basis for refusing to provide a witness to testify regarding
Hudson Bay’s role in the formation of IPE.
Topic No. 21: This topic seeks “The merger of Vringo and Innovate/Protect.” IPE limited its
response to IPE’s “knowledge of the merger between Innovate/Protect and Vringo as it relates to
the present litigation, the patents-in-suit, or the valuation of the patents-in-suit.” You stated that
any information related to the merger but unrelated to the litigation or the patents-in-suit would
not be relevant. I pointed out that to the extent the merger is unrelated to the patents-in-suit, we
should be able to explore this issue with the witness, as such information might lead to the
discovery of admissible evidence.
Topic No. 23: This topic seeks “I/P Engine’s agreements, licenses, offers to license, threats,
demands or covenants-not-to-sue that relate to the licensing of patent rights related to search
advertising.” IPE refused to provide a witness to testify regarding offers to license, threats or
demands that relate to the licensing of patent rights related to search advertising. I stated that
this refusal was improper, as IPE’s offers to license, threats, or demands related to the patents-atissue or other Lycos Patents, for example, could be relevant. You agreed to take this issue back
to your client. Please let us know as soon as possible what Plaintiff’s final position is on this
topic.
Topic No. 25: This topic seeks “Any contacts with the press regarding the patents-in-suit, this
litigation, or the merger between Vringo and Innovate/Protect.” We agreed that this issue is the
same as the issue in Topic No. 21—Plaintiff will only provide a witness to testify regarding the
merger as it relates to the patents-in-suit or the present litigation, Defendants believe that the
designee should be prepared to testify more broadly regarding the merger.
IPI and Hudson Bay
The deposition notices to IPI and Hudson Bay are largely identical to IPE. We agreed that
generally the specific objections and responses to the topics on behalf of IPI and Hudson Bay,
and thus any issues related to those topics, mirrored those of IPE discussed in more detail above.
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Topic Nos. 5, 11, 12 to IPI: IPI refused to provide a witness to testify in response to these topics
because IPI has no information relating to these topics. We discussed that IPE and IPI have the
same witness appearing for deposition, the same board of directors, the same employees, and the
same office location. You confirmed that IPI has no independent knowledge regarding these
topics separate and apart from IPE’s knowledge.
Topic Nos. 5, 9, 11, 12 to Hudson Bay: Similarly, Hudson Bay refused to provide a witness to
testify in response to these topics because Hudson Bay has no independent knowledge relating to
these topics.
Topic No. 17: This topic seeks IPI’s and Hudson Bay’s “corporate structure and status, including
without limitation its organizational structure, ownership structure, shareholders, general
partners, limited partners, investors, decision makers and past and present employees.” IPI and
Hudson Bay refuse to provide a witness regarding “ownership structure, shareholders, general
partners, limited partners, investors and decision makers.” Please explain IPI’s and Hudson
Bay’s justification for refusing to provide a witness on these topics.
Topic No. 19: IPI and Hudson Bay both refuse to provide a witness to testify regarding the
location of and storage of any documents related to IPE. This is improper. To the extent that IPI
or Hudson Bay have documents related to IPE, the corporate designee should be prepared to
testify regarding the location and storage of such documents.
Vringo
Topic Nos. 8 and 12: Topic 8 seeks “The merger of Vringo and Innovate/Protect” and Topic 12
seeks “Any contacts with the press regarding the patents-in-suit, this litigation, or the merger
between Vringo and Innovate/Protect.” We discussed that the issue with Vringo’s response to
these topics is the same as the issue with regard to Topic Nos. 21 and 25 to IPE, namely that
Vringo limited its response to the present litigation, the patents-in-suit, or the valuation of the
patents-in-suit, and Defendants believe Vringo should be prepared to testify more broadly.
Topic No. 11: This topic seeks “Any valuation of the patents-in-suit.” The issue here is the
same as Topic No. 14 to IPE, Vringo has limited its response to valuations conducted by or on
behalf of Vringo, and Defendants believe that Vringo should be prepared to testify regarding its
knowledge of any valuations of the patents-in-suit.
Defendants request that Vringo reconsider and provide a witness fully prepared to testify in
response to this topic. Again, however, if Vringo can confirm that it is aware of no other such
valuations, then perhaps this could resolve any potential dispute.
Third, we discussed Plaintiff’s outstanding requests for production from Defendants. You then
sent an email at 8:23 p.m. PST last night demanding a date certain for all productions from
Defendants by COB today, or else you would seek intervention of the Court. As an initial
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matter, Defendants object once again to Plaintiff’s demands for immediate response and threats
to go to the Court in the event it does not receive one. Defendants do not agree that the
documents sought by Plaintiff are relevant, much less that they are necessary to the expert
reports due on Wednesday, July 25. Nonetheless, Defendants have been diligently investigating
Plaintiff’s demands since receiving its letter on July 9, including agreeing to collect documents
requested by Plaintiff despite believing that these documents were sought by Plaintiff’s Requests
for Production or that the documents are not relevant to the claims or defenses in this litigation or
reasonably likely to lead to the discovery of admissible evidence. Plaintiff’s demands for
immediate satisfaction, especially given its own failures to properly comply with discovery in
this matter, are improper and do nothing to move this case forward.
Google
I stated that Google is investigating whether it was provided a list of IAC syndicated sites, and I
should know the results of that investigation by Monday. In your email, you ignore this
statement and demand a response by close of business today. Again, we should know whether
Google was provided with such a list by Monday, and will let you know at that point if we have
it. If Google has this list, it will produce it next week.
Plaintiff requested “all relevant portions” of the Google Blog and the AdWords Blog. I stated
that Google believes it has already produced the responsive portions of these blogs. I also stated
that it is unclear what additional portions of the blogs Plaintiff believes are relevant. Therefore
Google will be producing these blogs in their entirety. In response to the demand in your email,
Google is in the process of collecting these documents now and will produce them as
expeditiously as possible. In the meantime, please note that these blogs are publicly available
online, and therefore accessible to Plaintiff even without this production.
Plaintiff also requested documents related to the negotiations surrounding the licensing
agreements produced by Google. I stated that Google was currently investigating to see whether
such documents are compiled in folders or files, or whether a custodial search would be required
to locate the documents. I agreed to keep you updated on this investigation. In your email, you
also demanded a date certain for production of these documents by today. Again, this demand
for an immediate response is improper. Google has confirmed that there are no such documents
compiled in central folders or files. Thus, to the extent any documents responsive to this request
exist, the only way to produce them would be to conduct another custodial collection, search and
production. As outlined in our letter of July 13, these documents are not responsive to Plaintiff’s
Requests for Production, and Plaintiff has not adequately articulated why these documents are
relevant, or why the benefit to Plaintiff from collecting these documents outweighs the burden to
Google in conducting an additional custodial review and production at this late date in discovery.
Accordingly, Google will not be producing additional documents in response to this request.

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Gannett
Plaintiff requested reports that Gannett had pulled from the Google Console. Gannett has
conducted a reasonable search to locate any such reports, and will produce no later than July 23
any reports that it found.
Plaintiff asked about the dashboard mentioned by Ms. Bamford in her deposition that provides
information about operational metrics for the USA TODAY website. As I noted on our call, Ms.
Bamford testified that the dashboards are not related to AdSense for Search; they are therefore
not relevant to this case and will not be produced. (Bamford Transcript, 96:6-8.) In your email
response last night, you acknowledge that Ms. Bamford testified that these dashboards are not
related to AdSense for Search. Nonetheless, you assume that because Ms. Bamford stated that
the dashboards relate to “online or digital advertising” that they must relate to AdSense for
Search. This assumption is flawed, and Plaintiff’s continued demand for USA TODAY’s
dashboards is without merit. The fact that Ms. Bamford said that these dashboards relate to
“online or digital advertising” does not negate the fact that these dashboards are in no way
related to AdSense for Search, as Ms. Bamford also testified. To be clear: none of the numbers
in these dashboards relates to AdSense for Search; instead, the dashboards include total revenue,
print revenue, digital revenue, circulation revenue, other revenue, unique visitors, page views,
impressions, full time employees, and traffic. USA TODAY has provided complete revenue
information for its use of AdSense for Search, and will not be producing these irrelevant
dashboards.
Plaintiff is also seeking revenue information from other Gannett sites that use AdSense for
Search. I informed you that Gannett is investigating the feasibility of providing this information.
Again, last night you demanded a date certain for production by today. In response to the
demand in your email, Gannett will produce a report regarding Gannett’s AdSense for Search
revenue no later than July 23.
IAC Search & Media
In your email, you claim, citing to Mr. Cotter’s deposition testimony, that “IAC is now saying
Mr. Cotter misrepresented whether IAC prints this information.” This mischaracterizes both my
statement to you and Mr. Cotter’s testimony. Mr. Cotter testified as follows on issue of the
Google Console:
Q. Okay. Do you know how far back the information goes?
A. I don't. I don't.
Q. Does there ever -- is there ever an instance where IAC will print out any of that information?
A. Sure.
Q. Is it -- is that typically what happens, or -MS. O'BRIEN: Objection; vague.
THE WITNESS: I wouldn't say typical, no, but it happens.
BY MS. RUDENKO:
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Q. Do you know around -- estimating how often it happens?
MS. O'BRIEN: Objection; calls for speculation.
THE WITNESS: It's really hard to answer, because you could access this for -- for so many
things. But we access it daily, but we don't print anything. We generate other reports based on
this information, generally.
Mr. Cotter specifically stated that it was not IAC’s general practice to print reports from the
Google Console. IAC has searched for such printouts but has been unable to locate any. At your
request, IAC is looking into whether Mr. Cotter has emails with information collected from the
Google Console. If Mr. Cotter does have such emails, IAC will produce them by July 27.
Plaintiff also requested financial reports compiled by Ask.com. I noted that we had investigated
this issue, and that it would be unduly burdensome to produce these reports because, among
other things, they are not maintained together in one file. I also noted that given that IAC has
already produced revenue information specific to AdSense for Search, these reports would be
cumulative . In response, you state that “these documents include metrics and information about
IAC’s use of AdSense for Search . . . are relevant to the issues in this litigation.” This is
insufficient. Plaintiff does not explain why these metrics and information are relevant or why
Plaintiff cannot obtain this information through other, more convenient methods, such as the
extensive financial information already produced by IAC relating to AdSense for Search. Under
these circumstances, the additional burden cannot be justified.
Target
I stated that we were waiting for information from Target regarding Plaintiff’s questions about
the “Business Dashboard,” and would get back to you as soon as feasible on this issue. In
response to your email demand, Target will produce these documents today.
Fourth, we discussed Plaintiff’s request for an additional 30(b)(6) deposition of Google related to
Plaintiff’s Amended Deposition Topic Nos. 8 and 9 (Damages) and 18 (Liability). In your July
16 email, you stated that with respect to Mr. Maccoun’s deposition, I/P Engine seeks to take no
more than 3 hours of deposition testimony related to the amended notices topics including
Google’s knowledge regarding the negotiation and evaluation of license agreements concerning
search advertising technology. Google’s response is as follows: Google would be willing to
provide Mr. Maccoun for a shorter period of time, e.g. 1.5 hours, of deposition in response to
Plaintiff’s amended notices topics, even though Plaintiff has run out of time for its 30(b)(6)
depositions of Google. However, in exchange for providing Mr. Maccoun for this additional
time, Plaintiff must agree to withdraw its motion for additional depositions, and abide by the
parties’ agreement on deposition count.
In connection with this proposal, I noted that Plaintiff in your July 9 letter had identified only
three agreements about which it was seeking additional information, the Hewlett Packard
agreements, the Invenda Patent License Agreement, and the Carl Meyer agreements. To the
extent that Plaintiff seeks to take additional deposition testimony regarding any other agreements
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during the deposition of Mr. Maccoun, Plaintiff should identify those issues in advance of the
deposition so that the witness is properly prepared to testify.
I further noted that with regard to Liability Topic No. 18, Google is willing to provide Mr.
Maccoun to testify regarding the general area of the agreements produced in the case, including
whether Google is practicing in that general area. To the extent Google has any knowledge
regarding specific analyses of whether Google practices or intends to practice the specific patents
at issue in those agreements, any such analyses would be privileged.
You agreed to discuss Google’s proposal with your client and provide a response. In your email,
you decline Google’s proposal. Your counter-propose taking Mr. Maccoun’s deposition for 2
hours, although you do not address any of the substantive aspects of Google’s proposal as
outlined above. You also refuse to agree to Google’s request that Plaintiff withdraw its motion
for additional depositions, and abide by the parties’ agreement on deposition count, because
these are “two wholly separate issues.” On the contrary, the issue is and has always been one—
Plaintiff’s refusal to abide by the parties’ agreement on depositions. Plaintiff agreed to seven
hours of “Damages” 30(b)(6) and seven hours of “Liability” 30(b)(6), and now demands more.
Plaintiff agreed to depose the individuals in the initial disclosures, and now wants different
individuals. Is it Plaintiff’s position that it can continue to ask for more and more time for Rule
30(b)(6) depositions regardless of the time limits agreed? In other words, is it Plaintiff’s position
that it need not follow this aspect of the parties’ February agreement on depositions as well?
Fifth, we discussed the outstanding document production issues with regard to I/P Engine and
Innovate/Protect. We discussed Innovate/Protect’s production of documents related to the
merger between Innovate/Protect and Vringo. Defendants had noted a number of issues related
to this production in Ms. Ghaussy’s letter of June 27, 2012. You stated that you had investigated
this issue, and that Innovate/Protect was not in possession, custody or control of any other
documents responsive to Defendants’ requests.
Additionally, we discussed the concern that Defendants previously raised regarding the
production of Mr. Lang. Given that Mr. Kosak produced relevant documents between himself
and Mr. Lang that were not produced by Mr. Lang, Defendants expressed concern that other
relevant documents in Mr. Lang’s possession, custody or control may have been improperly
withheld or maintained. You stated that an investigation had been conducted, you confirmed that
you had found the copies of these emails in Lang’s production and that they were inadvertently
withheld from production, and you confirmed that there were no other documents being
improperly withheld from production. Please also confirm that Mr. Lang’s documents are being
properly maintained and have been properly maintained throughout the pendency of this
litigation.
I also noted that we still do not have Mr. Kosak’s consulting agreements and reiterated our
request for any such agreements. Given that Topic No. 22 of Defendants’ Deposition Notice to
I/P Engine relates to these agreements, we expect that any agreements between Mr. Kosak, I/P

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Engine, Innovate/Protect, Hudson Bay and Dickstein Shapiro will be produced sufficiently in
advance of the deposition. Please confirm.
Sixth, we discussed I/P Engine’s response to Google’s Interrogatory No. 13 and Google’s
Interrogatory No. 16. These issues are addressed in separate correspondence between the parties.
Sincerely,
/s/ Emily C. O’Brien
Emily C. O’Brien
cc:

[e-mail]
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