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

Filing 666

Declaration re 665 Memorandum in Support of Emily O'Brien in Support of Defendants' Motion to Strike Plaintiff's Deposition Designations by IAC Search & Media, Inc., Target Corporation. (Attachments: # 1 Exhibit 1, # 2 Exhibit 2, # 3 Exhibit 3)(Noona, Stephen)

Exhibit 2

Jen Ghaussy
From:
Sent:
To:
Cc:
Subject:

Emily O'Brien
Wednesday, September 26, 2012 8:27 PM
Brothers, Kenneth
QE-IP Engine; 'Noona, Stephen E.'; zz-IPEngine; '[e-mail]'; '[e-mail]'
RE: I/P Engine v. AOL et al.

Ken,
First, we disagree with your characterization of the meet and confer, but will not belabor
the point further.
Second, we will circulate proposed revisions to the ActiveVideo PTO as a starting position
for the parties' discussion of a pretrial order in this case.
Third, we are not available at 6:00 p.m. ET on Friday. Given that the Court order specified
that the parties' attorney conference begin at 2:00 p.m. ET, we would request that the
parties begin at that time, with someone else from your team filling in if you are
unavailable.
I understand that you and Stephen Noona have had several discussions to start
the pretrial process and we hope to continue discussions. We can then continue on as needed
next week, with Virginia counsel participating in person, in Norfolk, as their schedule
allows.
Fourth, we do not fully understand your inquiry regarding stipulations and possible
agreements on motions in limine, but will consider your proposals in good faith and work
toward reaching agreements if possible. As to the authentication stipulation draft, the
parties had agreed to defer the issue until after pretrial disclosures had been exchanged.
We agree that it makes sense to discuss this during the parties' conferences. We similarly
agree that the parties should discuss all of the motions in limine, and see if there is any
agreement that can be reached. Beyond that we are not certain to what you are referring.
Please explain in advance of the call.
Fifth, it is our understanding that the purpose of the conferences, in part, is to discuss
the parties' objections to pretrial disclosures, and we intend to do so. Given that Judge
Jackson will be conducting the Pretrial, we will need to work out as many objections as
possible.
Finally, myself, Stephen Noona and David Perlson will join the initial call to discuss these
issues.
Thank you,
Emily
-----Original Message----From: Brothers, Kenneth [mailto:[e-mail]]
Sent: Wednesday, September 26, 2012 10:34 AM
To: Emily O'Brien
Cc: QE-IP Engine; 'Noona, Stephen E.'; zz-IPEngine; '[e-mail]'; '[e-mail]'
Subject: RE: I/P Engine v. AOL et al.
Emily:
Your 11:34 pm partial summary of our meet and confer of yesterday is incomplete. I do not
have the time to correct everything, but note my disagreement with your characterizations
1

regarding plaintiff's deposition designations. I also note that you did not include my
reasons for not accepting Defendants' demand that plaintiff withdraw its deposition
designations.
Steve and I have been discussing for weeks the pretrial procedures based upon
the ActiveVideo PTO, including a schedule and process for narrowing deposition designations.
I had understood (and continue to understand) that the ball was in Defendants' court to
provide me with their proposed variations from the ActiveVideo PTO. In my view, there is no
legitimate basis for Defendants' protestations regarding deposition designations, especially
because Defendants have never said that they are unable to comply with the Scheduling Order.
You write that the parties are at an impasse, but I do not understand the basis for the
statement, as Defendants are under no obligation that have said they cannot meet.
With regard to the attorney conference on Friday, I have other commitments for the entire day.
I request that we start the attorney conference by phone at 6 pm ET on Friday. We expect
that the conference will continue into the following week. I believe that in-person meetings
are very helpful to resolve issues, and propose that we meet in DC on the afternoon of
Wednesday, October 3, or the morning of Thursday, Oct. 4, as one or more of you will be
flying east for the final pretrial on Friday, Oct. 5.
To facilitate preparation for the attorney conference on Friday, please advise by noon ET
tomorrow of the following:
1. Agreement on the time on Friday
2. Whether Defendants agree to the ActiveVideo PTO for pretrial agreements and procedures.
If not, please provide Defendants' proposals for those pretrial procedures. If we are able
to agree to use the ActiveVideo PTO (subject to minor timing variations), then this will
dramatically narrow the scope of objections to trial exhibits, and defer discussions
regarding deposition designations objections.
3. Whether Defendants will be prepared at the first attorney conference to discuss
stipulations and possible agreements on motions in limine 4. Whether Defendants will be
prepared to discuss the remaining objections to trial exhibits 5. Who will be participating
in the attorney's conference
Ken

Confidentiality Statement
This email message, including any attachments, is intended solely for the use of the
addressee(s) named above. This communication may contain privileged and/or confidential
material. If you are not the intended recipient, you have received this communication in
error, and any review, use, printing, copying, or other dissemination of this email message
is strictly prohibited. If you are not the intended recipient, please notify the sender
immediately by reply email message or notify our email administrator at
[e-mail] and permanently delete and destroy the original message and
any and all copies, including printouts and electronic copies on any computer system.
Dickstein Shapiro LLP
www.DicksteinShapiro.com

-----Original Message----From: Emily O'Brien [mailto:[e-mail]]
Sent: Tuesday, September 25, 2012 11:34 PM
To: Brothers, Kenneth
Cc: QE-IP Engine; 'Noona, Stephen E.'; zz-IPEngine; '[e-mail]'; '[e-mail]'
Subject: RE: I/P Engine v. AOL et al.
2

Ken,
I write to follow up on our meet and confer this afternoon regarding Plaintiff's deposition
designations. We continue to look for ways to cooperate and streamline the pretrial process.
First, we agreed that the parties do not need to counter-designate testimony that the other
side has included in its designations. In the event that one side decides not to play the
entirety of a designation, the other side will be allowed at that point to counter-designate
additional testimony within the original designations. For example, if Plaintiff has
designated page 2:1-30 of a deposition transcript but notifies Defendants in advance of the
use of that testimony that it only intends to play 2:1-15, Defendants will be entitled to
counter-designate testimony within 2:16-30. We understand that this does not preclude the
parties from objecting to the admissibility of the counter-designation testimony on any other
grounds.
Second, we asked Plaintiff again to narrow its designations of deposition testimony, as they
are overbroad and as such make it extremely difficult for Defendants to object and for the
parties to be able to work together to resolve objections and counters, as appropriate, in
advance of trial. Plaintiff refused. Plaintiff also stated that it believed that it should
be allowed at trial to play standing alone deposition testimony at minimum from Defendants'
30(b)(6) witnesses, and possibly all of Defendants' witnesses, as party admissions under FRE
802(d). And as such intended to object to any counter-designations proposed by Defendants at
least for its 30(b)(6) witnesses for any reason other than completeness.
We asked that Plaintiff identify the witnesses it will call at trial by deposition testimony,
and at least narrow the deposition testimony of that subset. Plaintiff refused.
Third, we discussed the possibility of using a process like that set out in the ActiveVideo
pretrial order for exchanging deposition designations a set time prior to use, serving
objections/counters to that testimony, and then meeting and conferring and finalizing
deposition videos for use at trial. We also discussed the timeframe for such a process,
including potentially extending it to something longer than 72/48 hours in advance of the use
of testimony at trial. As expressed in my prior email and in your discussions with Stephen,
Defendants are amenable to such a proposal. But this doesn't negate the deadlines and duties
under the Pretrial Order to serve meaningful and fair designations by 9/19, and meaningful
counters and objections by 9/26. Indeed, this is exactly what the parties in the ActiveVideo
case did.
As expressed during our call, our concern with Plaintiff's overbroad designations is that the
parties are ultimately pushing off much of the work regarding designations, objections and
counters until during trial when the parties will be busy with trial work, rather than
resolving issues now. We are extremely concerned about delaying these issues, and reserve
all rights accordingly. You suggested that Plaintiff may be amenable to meeting and
conferring some reasonable time (e.g., 48 hours) after the Court has ruled on the pending
motions in limine to discuss narrowing designations, as these will impact the admissibility
of exhibits and testimony. But as we pointed out, we have no knowledge of when we will
receive these rulings, and it may be quite close to trial.
The problem with Plaintiff's position is that it creates a situation where Plaintiff may be
constantly changing its designations, requiring Defendants to change their objections and
counters, which may then result in Plaintiff changing its designations, etc., etc. This is
not a reasonable solution. As you know, at this point Plaintiff has designated testimony
from twelve witnesses, constituting what seems to more than 14 hours (and probably quite a
bit more) of testimony. This in no way puts Defendants on notice of the testimony that
Plaintiff may play at trial or that its experts may rely on. As Plaintiff has refused to
narrow its designations at this point, the parties are at an impasse regarding this issue.
3

Thank you,
Emily

From: Brothers, Kenneth [mailto:[e-mail]]
Sent: Tuesday, September 25, 2012 12:19 PM
To: Emily O'Brien
Cc: QE-IP Engine; 'Noona, Stephen E.'; zz-IPEngine; '[e-mail]'; '[e-mail]'
Subject: RE: I/P Engine v. AOL et al.
Emily:
Plaintiff does not agree either with Defendants' assertions regarding plaintiff's deposition
designations, or to your characterization of my conversation with Steve, to which you were
not a party. Plaintiff's deposition designations were made in good faith and with the
intention of placing Defendants on notice of testimony that plaintiff may play at trial or on
which plaintiff's expert might rely. Plaintiff declines your unilateral demand of 10:25 pm
last night that plaintiff serve revised designations today, as there is no reason to do so.
Just as there is no obligation that a party introduce every exhibit on their list of trial
exhibits, so is there no obligation that every second of designated testimony be used at
trial. This is especially true where, prior to the parties' service of their respective
deposition designations, counsel for the parties (Steve and me) had explicitly acknowledged
this fact, and had discussed a mechanism for exchanging narrowed deposition designations 72
hours prior to use, patterned after the ActiveVIdeo pretrial order.
Plaintiff does not agree that Defendants have been "hindered" in responding to Plaintiff's
designations. We do not believe that this is a legitimate complaint, and we expect that
Defendants will provide their counterdesignations and objections tomorrow. In my efforts to
meet Defendants' complaints, however, yesterday Steve and I discussed some ideas that, if
accepted, would have eliminated any purported hindrance. These ideas included the parties
(1) exchange counterdesignations tomorrow, (2) defer any objections to testimony until
narrowed designations are served 72 hours in advance; or (3) for party employees and
agents/designees whose testimony is binding pursuant to FRE 801(d)(2), defer fairness
counters and objections until 72 hours in advance; (4) exchange counters for third party
testimony. We also discussed the possibility where, if counters were deferred, if permitted
by the Federal Rule of Evidence, the non-designating party may reserve the right to later
counter-designate any portion of earlier-designated testimony.
All of these are ideas intended to
them with Steve again today; I had
phone and call me back to resolve,
and confer regarding these matters

address Defendants' supposed concerns. I have discussed
understood that Steve was going to try to get you on the
but I have not heard from him. I remain prepared to meet
prior to 6 pm ET today.

Ken

Confidentiality Statement
This email message, including any attachments, is intended solely for the use of the
addressee(s) named above. This communication may contain privileged and/or confidential
material. If you are not the intended recipient, you have received this communication in
error, and any review, use, printing, copying, or other dissemination of this email message
is strictly prohibited. If you are not the intended recipient, please notify the sender
immediately by reply email message or notify our email administrator at
4

[e-mail]<mailto:[e-mail]> and permanently
delete and destroy the original message and any and all copies, including printouts and
electronic copies on any computer system.
Dickstein Shapiro LLP
www.DicksteinShapiro.com<http://www.DicksteinShapiro.com>
From: Emily O'Brien [mailto:[e-mail]]
Sent: Monday, September 24, 2012 10:25 PM
To: zz-IPEngine; '[e-mail]'; '[e-mail]'
Cc: QE-IP Engine; 'Noona, Stephen E.'
Subject: RE: I/P Engine v. AOL et al.
Counsel,
I received no formal response to my email from Saturday regarding Plaintiff's overdesignation of deposition transcripts. As previously stated, we cannot believe that
Plaintiff intends to play or that the Court would allow it to play the entirety of the
deposition testimony it has designated at trial, or even that it would have sufficient time
to do so. I understand that Ken discussed this issue with Stephen today, and agreed that
Plaintiff would most likely not be playing the entirety of what it designated at trial. I
also understand that Ken pointed to the provision for objections and fairness designations in
the ActiveVideo Pretrial Order as providing a solution to the issue raised by Defendants.
But even under that Order, the parties exchanged meaningful objections and fairness
designations. While we are happy to continue to discuss the stipulations in the ActiveVideo
Pretrial Order in connection with this case, we do not agree with Plaintiff's broad reading
of this provision or that it will exempt us from complying with the Scheduling Order.
In order to comply with the Court's Scheduling Order, the parties are required to exchange
pretrial designations by 9/19, and exchange objections and counter-designations by 9/26, and
then meet and confer to try to resolve these objections in advance of submitting the Pretrial
Order. We would like to do so but, as previously noted, Defendants have been hindered in
that regard based on Plaintiff's over-designation of deposition transcripts. Please
reconsider your designations and send an amended list immediately. If Plaintiff refuses,
then please provide times tomorrow when you are available to meet and confer. Defendants
reserve all rights and objections to Plaintiff's designations.
Thank you,
Emily

Emily O'Brien
Associate,
Quinn Emanuel Urquhart & Sullivan, LLP
50 California Street, 22nd Floor
San Francisco, CA 94111
415-875-6323 Direct
415.875.6600 Main Office Number
415.875.6700 FAX
[e-mail]<mailto:[e-mail]>
www.quinnemanuel.com<http://www.quinnemanuel.com>
NOTICE: The information contained in this e-mail message is intended only for the personal
and confidential use of the recipient(s) named above. This message may be an attorney-client
communication and/or work product and as such is privileged and confidential. If the reader
of this message is not the intended recipient or agent responsible for delivering it to the
intended recipient, you are hereby notified that you have received this document in error and
that any review, dissemination, distribution, or copying of this message is strictly
5

prohibited. If you have received this communication in error, please notify us immediately by
e-mail, and delete the original message.

From: Emily O'Brien
Sent: Saturday, September 22, 2012 9:52 AM
To: 'zz-IPEngine'; '[e-mail]'; '[e-mail]'
Cc: QE-IP Engine; 'Noona, Stephen E.'
Subject: I/P Engine v. AOL et al.

Counsel,

We have reviewed Exhibit A to Plaintiff's Pretrial Disclosures, and it is apparent that
Plaintiff has vastly over-designated the deposition transcripts. For example, Plaintiff has
designated the majority of the deposition transcripts of Bartholomew Furrow, Gary Holt,
Nicholas Fox, etc. This is not in good faith. Please send an amended list of designations
no later than noon EST tomorrow, and confirm you will do so today. If Plaintiff refuses to
do so then we reserve all rights, including moving to strike and/or that Plaintiff be
required to play the entirety of its designations at trial.

Thank you,
Emily

Emily O'Brien
Quinn Emanuel Urquhart Oliver & Hedges, LLP 50 California Street, 22nd Floor San Francisco,
CA 94111
Direct: [phone]
Main Phone: [phone]
Main Fax: [phone]
E-mail: [e-mail]<blocked::mailto:[e-mail]>
Web: www.quinnemanuel.com<blocked::http://www.quinnemanuel.com/>
The information contained in this e-mail message is intended only for the personal and
confidential use of the recipient(s) named above. This message may be an attorney-client
communication and/or work product and as such is privileged and confidential. If the reader
of this message is not the intended recipient or agent responsible for delivering it to the
intended recipient, you are hereby notified that you have received this document in error and
that any review, dissemination, distribution, or copying of this message is strictly
prohibited. If you have received this communication in error, please notify us immediately
by e-mail, and delete the original message.

________________________________

6