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

Filing 837

Memorandum in Support re 835 MOTION for Judgment under Rule 52(B) and a New Trial under Rule 59 filed by I/P Engine, Inc.. (Attachments: # 1 Exhibit 1, # 2 Exhibit 2, # 3 Exhibit 3, # 4 Exhibit 4, # 5 Exhibit 5, # 6 Exhibit 6, # 7 Exhibit 7)(Sherwood, Jeffrey)

Exhibit 4

4

From:

Sent:
To:
Cc:

Subject:
Attachments:

Monterio, Charles
Tuesday, October 23, 2012 8:00 PM
QE-IP Engine ([e-mail]); Stephen E. Noona
([e-mail])
W. Ryan Snow ([e-mail]); Donald C. Schultz (dschultz@cwm- law.com);
zz-IPEnq ine
1/P Engine v. AOL et al.: 1/P Eng ine's objections, designations and counter-designations
to M r. Blais
Blais, Mark [Lycos] [Designations].pdf; IPE Objections to Defs Designations- Biais
10-23.pdf

Emily,
Attached please find 1/P Engine's designations and counter-designations to Mr. Blais. The second set of objections w ill
be sent momentarily.
Charles

1

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Transcripts
Jul 31, 2012 Blais, Mark [Lycos] [*Designations*]
Range: 7:21-8:10
Issues:
IPE Counter Designations
Q. What was your first position after
finishing law school?
A. I was a litigation associate at Jones Day
Reavis & Pogue in their, in its Cleveland, Ohio
office.
Q. When did you work at Jones Day? From what
time period?
A. September 1999 through April 2001.
Q. What was your next job after leaving Jones
Day?
A. I left to take a position as a litigation
associate at Goodwin Procter in Boston.
Q. How long were you at Goodwin Procter?
A. From June 2001 through January 2005.

Jul 31, 2012 Blais, Mark [Lycos] [*Designations*]
Range: 27:22-28:20
Issues:
IPE Counter Designations
Q. When you refer to AdSense, do you know if
Google uses -- of course Google uses. Do you know
if Lycos uses Google AdSense for content?
A. Yes.
Q. Okay. And does Lycos also use Google's
AdSense for search?
A. No.
Q. Does Lycos ever use AdSense for search?
A. Could you explain what you mean by "AdSense
for search"? I'm aware of AdSense for content, and
I'm obviously aware of Google's sponsored links
product for search.
Q. I think that's the same thing, but Google
AdSense for search, my understanding is that it's
the system that provides sponsored links as a result
of a search. So when you run the search, you have
the search and you have the sponsored links next to
the search.
A. Okay. We don't currently use it, but we
did in the past. I believe we've switched providers
many times over the last seven years. And I believe
we were using Google AdSense for search in 2006
before switching over to another provider.

Jul 31, 2012 Blais, Mark [Lycos] [*Designations*]

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Range: 29:8-8
Issues:
IPE Counter Designations
something within all that, but that's what I recall.

Jul 31, 2012 Blais, Mark [Lycos] [*Designations*]
Range: 29:23-30:9
Issues:
IPE Counter Designations
Q. Do you know what the time period was when
Lycos was doing business as Terra Lycos?
A. I don't know when that term was created,
but Terra owned Lycos from, I think, early 2000
through October 2004 when it sold Lycos to Daum.
Q. Do you know if Terra Networks purchased
Lycos in early 2000?
A. Yes.
Q. Do you know for how much?
A. I know that it was reported as 12 billion,
but the actual price was closer to 7 billion.

Jul 31, 2012 Blais, Mark [Lycos] [*Designations*]
Range: 31:22-23
Issues:
IPE Counter Designations
Q. Do you know what Lycos's revenues were
related to the use of Google AdWords in 2003?

Jul 31, 2012 Blais, Mark [Lycos] [*Designations*]
Range: 32:1-5
Issues:
IPE Counter Designations
A.

No.
Q. We were discussing before that Lycos began
using AdSense also in 2003; is that right?
A. I don't know about -- other than reading
this article, I don't know.

Jul 31, 2012 Blais, Mark [Lycos] [*Designations*]
Range: 49:22-24
Issues:
IPE Counter Designations
Q. Was Lycos aware in 2005 that Google's
quality score was determined based on the CTR of
your keyword?

Jul 31, 2012 Blais, Mark [Lycos] [*Designations*]
Range: 50:2-5
Issues:
IPE Counter Designations

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A.

I don't know.
Q. Similarly, was Lycos aware that the quality
score in AdWords in 2005 was based on the relevance
of your ad text?

Jul 31, 2012 Blais, Mark [Lycos] [*Designations*]
Range: 50:7-10
Issues:
IPE Counter Designations
A.

I don't know.
Q. Similarly, was Lycos aware in 2005 that
Google AdWords' quality score was based on the
historical keyword performance?

Jul 31, 2012 Blais, Mark [Lycos] [*Designations*]
Range: 50:12-12
Issues:
IPE Counter Designations
A.

I don't know.

Jul 31, 2012 Blais, Mark [Lycos] [*Designations*]
Range: 55:12-56:15
Issues:
IPE Counter Designations
Q. Did Lycos contact TiVo regarding licensing
of the '799 and '214 patents?
A. Yes.
Q. When did that occur?
A. It occurred sometime simultaneously with
the filing of the lawsuit. We didn't serve the
complaint, we sent a cover letter offering to
negotiate a license before serving the complaint.
So that would, if I remember correctly, that was
sometime around January of 2007.
Q. Did Lycos offer to license any patents at
that time to TiVo other than the '799 and '214
patents?
A. Not specifically.
Q. Was an initial offer made to TiVo regarding
licensing the '799 and '214 patents?
A. Yes.
Q. And what was that offer?
A. I honestly do not recall. I think we gave
them a model and talked about percentages that would
have been somewhere in the, you know, somewhere
between 2 and 8 million lump sum. I don't remember
specifically though.
Q. Do you recall if the license offer was for
past use?
A. It's for both.
Q. Did Lycos have any idea at the time of
TiVo's revenues related to the accused product?

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Jul 31, 2012 Blais, Mark [Lycos] [*Designations*]
Range: 56:17-57:12
Issues:
IPE Counter Designations
A.

Yeah, the revenues were public.
Q. What was the product, the TiVo product that
Lycos accused of infringing?
A. It was a recommendation feature of their
DVR product. They had a specific name for it, but I
don't recall what the name was.
Q. Do you know in 2007 what the revenues were
for the DVR product that was accused?
A. I don't recall what they were.
Q. Why did Lycos offer a lump sum amount to
license the '799 and '214 patents?
A. If I remember correctly -- sorry.
MS. ALBERT: Objection. Misconstrues.
A. If I remember, we may have offered them two
scenarios, one a lump sum and part for the past and
running royalty going forward. I know we did two
models, I just don't recall specifically whether we
offered both or not.
Q. At the time did Lycos have a preference for
one of the two models?

Jul 31, 2012 Blais, Mark [Lycos] [*Designations*]
Range: 57:14-16
Issues:
IPE Counter Designations
A. There were some preferences for a running
royalty to create a revenue stream, but it wasn't
strong.

Jul 31, 2012 Blais, Mark [Lycos] [*Designations*]
Range: 98:4-14
Issues:
IPE Counter Designations
Q. Did Overture ever contact Lycos regarding
licensing of the 6269316 patent prior to filing its
lawsuit?
A. No, I don't believe so. In fact, they
filed this lawsuit as a counterclaim to our lawsuit
against it.
Q. When did Lycos file its lawsuit against
Overture?
A. I don't know for sure. I wasn't at the
company when it was filed, but it was sometime in
2004.

Jul 31, 2012 Blais, Mark [Lycos] [*Designations*]

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Range: 101:1-3
Issues:
IPE Counter Designations
Q. Did the terms of that separate settlement
agreement impact the royalty payment in this license
agreement?

Jul 31, 2012 Blais, Mark [Lycos] [*Designations*]
Range: 101:7-9
Issues:
IPE Counter Designations
A. I don't know. I was not involved in the
negotiations of the payment under the settlement or
of this royalty, so I don't know.

Jul 31, 2012 Blais, Mark [Lycos] [*Designations*]
Range: 107:18-19
Issues:
IPE Counter Designations
Q. Do you know if any value was placed by
Lycos on the cross license agreement?

Jul 31, 2012 Blais, Mark [Lycos] [*Designations*]
Range: 107:21-108:3
Issues:
IPE Counter Designations
A.

No, I don't know of any value.
Q. Do you know if the '420 patent was included
within the cross license agreement?
A. I do not know.

Q. Similarly, do you know if the '664 patent
was included in the cross license agreement?
A. I don't know.

Jul 31, 2012 Blais, Mark [Lycos] [*Designations*]
Range: 110:13-14
Issues:
IPE Counter Designations
Q. Do you know what other sources of revenue
Lycos had in 2004 besides Google products?

Jul 31, 2012 Blais, Mark [Lycos] [*Designations*]
Range: 110:16-111:12
Issues:
IPE Counter Designations
A. Well, I wasn't at the company, however, we
had, again, subscription-based revenue. At the time
we owned Matchmaker, which was an online dating
site. We since sold that. You had to have a

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subscription to Matchmaker. Quote.com also had
subscribers, we no longer own that, but at the time
they had subscribers, Raging Bull we no longer own,
that was related to Quote. Those just have message
boards, so probably no independent revenue. Tripod
and Angelfire, again, had subscribers. So they had
a subscription base that paid users who built
Websites for users, for users are the ones that get
the contextually targeted ads on their pages. Wired
also had a subscription aspect to it. It was an
online news site that we no longer own. We had
domain sales, email subscription, at the time we
would have had banner ads throughout our properties,
sponsorships, subscribers to Gamesville. Again, all
types of advertising both in games and outside the
games on Gamesville. That's all I can think of
right now. Of course we had AdBuyer.

Jul 31, 2012 Blais, Mark [Lycos] [*Designations*]
Range: 113:8-14
Issues:
IPE Counter Designations
Q. Have you personally been involved in any
licensing of patents on behalf of Lycos?
A. Yes.
Q. Does Lycos take into account, does Lycos
take into account its current business relationship
with the potential licensee when determining the
terms for a patent license?

Jul 31, 2012 Blais, Mark [Lycos] [*Designations*]
Range: 113:16-21
Issues:
IPE Counter Designations
A. We haven't entered a patent license with a
current business partner of the company, in my
experience.
Q. Have you negotiated with any current
business partners related to the potential license
of the patent?

Jul 31, 2012 Blais, Mark [Lycos] [*Designations*]
Range: 113:23-114:14
Issues:
IPE Counter Designations
A. Yes, related to the game patent I mentioned
earlier, a few of the parties I think we felt were
infringing that particular patent that were also
business partners, albeit small.
Q. When did those negotiations take place?
A. 2006, 2007.
Q. Did Lycos take into consideration its

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business relationship with those entities when
negotiating regarding the patent?
A. Not really. Because, again, those
relationships were very, very small. They -- it
wouldn't have made sense really to care about the
business relationship in those instances.
Q. Would Lycos consider the business
relationship in a potential patent license if the
business was larger?

Jul 31, 2012 Blais, Mark [Lycos] [*Designations*]
Range: 114:16-16
Issues:
IPE Counter Designations
A.

Yes.

Jul 31, 2012 Blais, Mark [Lycos] [*Designations*]
Range: 116:14-16
Issues:
IPE Counter Designations
Q. Do you know if Lycos would have been
willing to license the '420 patent to Google in 2005
for a lump sum amount?

Jul 31, 2012 Blais, Mark [Lycos] [*Designations*]
Range: 116:18-19
Issues:
IPE Counter Designations
A. I never had any conversations with my
client back then. I couldn't say.

Jul 31, 2012 Blais, Mark [Lycos] [*Designations*]
Range: 123:4-11
Issues:
IPE Counter Designations
Q.

What patent was Lycos contacted about?
A. I believe we were contacted at one point
about the '799 patent, and we may have been
contacted on another specific patent, that I just
don't remember right now, but we never engaged in
any talks to sell an individual patent. The only
talks we engaged in came in 2009 as related to the
entire portfolio.

Jul 31, 2012 Blais, Mark [Lycos] [*Designations*]
Range: 136:5-6
Issues:
IPE Counter Designations
made his 3 million the final offer, so I never went

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back to Altitude with the 3.2.

Jul 31, 2012 Blais, Mark [Lycos] [*Designations*]
Range: 146:20-22
Issues:
IPE Counter Designations
Q. Similarly, do you have reason to believe
that Lycos wouldn't have licensed the patent in this
agreement for $3.2 million?

Jul 31, 2012 Blais, Mark [Lycos] [*Designations*]
Range: 147:5-9
Issues:
IPE Counter Designations
A. No. I have no reason to believe one way or
the other.
Q. Do you have any reason to believe that
Lycos wouldn't have licensed the patents in this
agreement for $3.2 million in 2004?

Jul 31, 2012 Blais, Mark [Lycos] [*Designations*]
Range: 147:11-20
Issues:
IPE Counter Designations
A. I have no reason. What we would have done
in 2004, I mean, like I said, a lot of this was
internally driven. We would have been a much
different company back then, larger in all respects,
much bigger parent company, and just the overall
business forces would have been different. This was
largely driven by our lack of profitability at the
time, our need for some cash, things like that.
Circumstances being completely different, I have no
idea what we would have done back then.

Jul 31, 2012 Blais, Mark [Lycos] [*Designations*]
Range: 154:9-155:5
Issues:
IPE Counter Designations
Q. I just want to clarify, because I believe
in the line of questioning, if you look at page six
of the agreement, the cross license agreement
section, paragraph 11.1, I believe the questions
were, do you know whether the '420 patent would be
included in this cross license, and I believe your
testimony was you do not know.
A. Well, no patent is specifically included.
It depends on whether the patent covers the criteria
in here, which is in the field of art covered by the
claim of the licensed patents made by the terms of
this license by licensee.

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Q. And by licensee they're referring to Lycos?
A. Yes.
Q. Would that first sentence there mean that
it had to be an invention created by Lycos during
the term of the patent -- strike that.
Does that first sentence mean that the
invention, that Overture would have a license to -would have to be made by Lycos during the term of
this agreement?

Jul 31, 2012 Blais, Mark [Lycos] [*Designations*]
Range: 155:7-21
Issues:
IPE Counter Designations
A. I'm just going to take a second to read
this.
Q. That's fine.
A. Yes, it would have to be within the field
of art covered by the terms of this license
agreement.
Q. And do you know or do you have a
recollection when the '420 patent was filed?
A. It was before this license agreement, so it
would not come within this.
Q. And the same question regarding the '664
patent, do you have a recollection of when that
patent was filed?
A. Also before this agreement was entered. So
it would not be included in this section.

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Objections to Defendants October 22, 2012 Designations
Name
Blais, Mark

Deposition Cite
13:13 - 14
13:16
13:17 – 14:03
30:10 – 31:10
31:12 – 31:14
31:16 – 19
31:21
32:06 – 07
32:09 – 20
32:23
50:13 – 15
50:17
50:21 – 22
50:24
51:09 – 13
52:03 – 04
52:06
52:16 – 18
52:20
101:10 – 102:09
102:11 – 105:06
105:08 – 106:01
106:03 – 107:02
107:04
109:10 – 110:02
110:04
111:13 – 15
111:18

Objection

H, 402, 403
H, 402, 403
H, 402, 403

H
H
H
H
H
H
H
H
H
H
H
H
I, H
H
H
H
H
104, 402, 403, H
H
H
H