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

Filing 766

NOTICE by AOL Inc., Gannett Company, Inc., Google Inc., IAC Search & Media, Inc., Target Corporation of Filing of Defendants Proffer Of Evidence Related To Laches (Attachments: # 1 Exhibit A, # 2 Exhibit B, # 3 Exhibit C)(Noona, Stephen)

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

Plaintiff,
v.
AOL, INC., et al.,
Defendants.

DEFENDANTS’ PROFFER OF EVIDENCE RELATED TO LACHES
Defendants Google Inc., AOL, Inc., IAC Search & Media, Inc., Target Corp., and
Gannett Co., Inc. (collectively “Defendants”) respectfully submit this proffer of evidence related
to their laches defense in this litigation.
Attached hereto as Exhibit A is a true and correct copy of the deposition of Ken Lang,
with highlighting indicating the portions of Mr. Lang’s deposition testimony related to laches.
As shown in Exhibit A, Mr. Lang could not remember whether his prior “NewsWeeder” system
used content-based and collaborative filtering or whether NewsWeeder practiced the Asserted
Patents. (Lang Dep. at 81:1-15, 201:9-202:1). He testified that he believed the WiseWire
service used collaborative and content filtering, but he did not recall whether WiseWire was ever
used with a search engine. (Id. at 87:24-89:4; 90:2-14). Mr. Lang did not remember whether
WiseWire used a user query to perform content-based or collaborative-based filtering. (Id. at
90:19-91:3). Mr. Lang did not recall what “adaptive filtering” meant when he filed his patent
applications in 1998. (Id. at 193:12-194:7). Mr. Lang also did not remember how WiseWire 3.0
differed from previous versions. (Id. at 160:10-19). He also could not remember whether he did
a prior art search before filing his patent applications. (Id. at 152:22-153:7, 251:21-25). He did

01980.51928/5031124.1

1

not remember whether he provided information on “GroupLens,” a collaborative filtering
system, to his patent attorneys. (Id. 92:24-93:10). He also testified that he no longer possessed
his files or notebooks from his time at WiseWire and Lycos. (Id. at 119:21-120:11; 121:11122:17). Prior to 2011, Mr. Lang had not read his patents since around 2001 and did not see the
need to read them in connection with his deposition in this case. (Id. at 31:19-32:5). Mr. Lang
did not recall whether he did any work in connection with Internet search while at Lycos other
than Gigasearch. (Id. at 64:3-16). Mr. Lang testified that he did not recall whether or not he had
ever developed any prototype system of the inventions of the patents-in-suit, and he did not
recall anyone ever testing the inventions at issue in this case. (Id. at 64:23-65:15). Mr. Lang did
not know whether Lycos ever used the patents-in-suit. (Id. at 66:2-5). Mr. Lang also did not
recall what Mr. Kosak contributed to the patents-in-suit. (Id. at 85:2-10).
Attached hereto as Exhibit B is a true and correct copy of the deposition of Donald
Kosak, with highlighting indicating the portions of Mr. Kosak’s testimony related to laches. As
shown in Exhibit B, Mr. Kosak did not know what the first system was to combine content-based
and collaborative filtering, or whether his inventions were the first to do so. (Kosak Dep. 73:312; 82:21-84:1). Mr. Kosak also could not recall his first invention that used content and
collaborative filtering. (Id. 75:4-14, 214:11-215:21). He could not remember what involvement
he had with the prosecution of the Asserted Patents. (Id. at 275:2-15). He also could not
remember how some of his early prototypes allegedly practicing the Asserted Patents functioned.
(Id. at 254:12-256:13; 258:14-260:9). He did not know whether the prototype had a contentbased filtering system that did the combining of the content-based information and the
collaborative-based information. (Id. at 258:14-260:9). Mr. Kosak testified that he had not
looked at the contents of the ‘799 patent in quite some time and could not define collaborative
filtering in the context of the patent. (Id. at 88:3-8). And he testified that he no longer possessed

01980.51928/5031124.1

2

his files from his time at WiseWire and Lycos. (Id. at 159:22-160:4, 164:11-18). Mr. Kosak
knew about Google AdSense by 2005 because he used it at Lycos. (Id. at 16:6-11). Mr. Kosak
could not recall whether he thought in 1998 that a system for scanning a network was different
than a system for searching a network. (Id. at 66:7-15). He also could not remember which
iteration of Empirical Media’s software involved the technology in the patents-in-suit. (Id.
138:11-139:14).
Attached hereto as Exhibit C is a true and correct copy of the deposition of Mark Blais,
the 30(b)(6) representative of Lycos, with highlighting indicating the portions of Mr. Blais’
testimony related to laches. Mr. Blais could not say whether Lycos evaluated the intellectual
property of WiseWire (Mssrs. Lang’s and Kosak’s company) when it acquired WiseWire. (Blais
Dep. 13:13-14:3). Similarly, Mr. Blais could not say whether Terra Networks and Daum
Communications evaluated Lycos’s intellectual property (including the Asserted Patents) when
they acquired Lycos in 2000 and 2004. (Id. at 30:10-31:21). He could not say how much
revenue Lycos was earning from Google’s products around the time of the hypothetical
negotiation. (Id. at 32:6-23, 109:10-110:4, 111:13-18). He could not recall Lycos’s corporate
policies regarding patent enforcement and licensing around the time of the hypothetical
negotiation. (Id. at 50:14-17, 51:9-13, 52:3-6, 52:16-20). And he could not recall numerous
details about the license agreement between Lycos and Overture regarding U.S. Patent No.
6,269,361 (“the ‘361 Patent.”) (See id. at 101:10-107:4).

Dated: October 30, 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
01980.51928/5031124.1

3

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

01980.51928/5031124.1

4

CERTIFICATE OF SERVICE
I hereby certify that on October 30, 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 Plaintiff, 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]

01980.51928/5031124.1

5