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

Filing 865

Declaration re 863 Opposition (of Dave Nelson) in Support of Defendants' Opposition to Plaintiff's Motion for Judgment Under Rule 52(B) and a New Trial Under Rule 59 on Laches by AOL Inc., Gannett Company, Inc., Google Inc., IAC Search & Media, Inc., Target Corporation. (Attachments: # 1 Exhibit A, # 2 Exhibit B, # 3 Exhibit C, # 4 Exhibit D, # 5 Exhibit E)(Noona, Stephen)

EXHIBIT D

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF VIRGINIA
NORFOLK DIVISION
__________________________________________
)
I/P ENGINE, INC.,
)
)
Plaintiff,
)
v.
)
Civ. Action No. 2:11-cv-512
)
AOL, INC. et al.,
)
)
Defendants.
)
__________________________________________)

PLAINTIFF I/P ENGINE, INC.’S FIRST SUPPLEMENTAL RESPONSES AND
OBJECTIONS TO DEFENDANT
TARGET CORP.’S FIRST SET OF INTERROGATORIES
Pursuant to Rules 26 and 33 of the Federal Rules of Civil Procedure, I/P Engine, Inc.
(“I/P Engine”) hereby supplements its responses and objections to Target Corp.’s (“Target”)
First Set of Interrogatories (“Interrogatories”). These responses are based on information
reasonably available to I/P Engine at the present time. I/P Engine reserves the right to
supplement these responses when, and if, additional information becomes available. I/P Engine
also reserves the right to object on any ground at any time to such other or supplemental
Interrogatories Target may propound involving or relating to the subject matter of these
Interrogatories.
GENERAL OBJECTIONS
1.

I/P Engine objects to the Interrogatories as overly broad and unduly burdensome

to the extent that they purport to require I/P Engine to seek information or documents outside of
I/P Engine’s possession, custody, or control as such information is beyond the permissible scope
of the Federal Rules of Civil Procedure and applicable law, and would further pose an undue
burden on I/P Engine.

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2.

I/P Engine objects to the Interrogatories to the extent that they seek information

that is not relevant to the issues in this litigation or framed by the pleadings, or that is not
reasonably calculated to lead to the discovery of relevant or admissible evidence.
3.

I/P Engine objects to the Interrogatories to the extent that they seek information

that, if furnished, would violate any domestic or judicial order, protective order, privacy interest,
contractual obligation, non-disclosure agreement, confidentiality agreement or other such
confidentiality obligation vis-à-vis to any third party. Absent third party permission, I/P Engine
will not provide such information unless ordered to do so by the Court.
4.

I/P Engine objects to the Interrogatories to the extent that they seek trade secrets

and/or confidential documents or information. However, subject to the foregoing general
objections, I/P Engine will provide the requested information to which Target is entitled in
accordance with a Protective Order, when entered.
5.

I/P Engine objects to the Interrogatories to the extent that they fail to describe the

information requested with particularity, are indefinite as to time and scope, and/or seek
information that is not relevant to the claims or defenses of the parties in this litigation.
6.

I/P Engine objects to the Interrogatories to the extent that they seek information or

documents protected by the attorney-client privilege, the work product doctrine, and/or any other
privilege or immunity. I/P Engine will not produce such protected information. Moreover, any
inadvertent disclosure of such information, or any disclosure of documents underlying that
information, shall not be deemed a waiver of any privilege or immunity. Privileged documents
that are otherwise responsive to any interrogatory will be identified on a privilege log in
accordance with Rule 26(b)(5).

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7.

I/P Engine objects to the Interrogatories to the extent that they seek to impose an

obligation of a continuing nature beyond that required by Rule 26(e).
8.

I/P Engine objects to Target’s definition of “‘I/P ENGINE,’ ‘you,’ ‘your’ and

‘PLAINTIFF’” (set forth in Paragraph 1) because the phrase “affiliates, parents, divisions, joint
ventures, licensees, franchisees, assigns, predecessors and successors in interest” is vague so as
to not be clear and comprehensible and also is overly broad because the phrase purports to
include independent third parties. In responding to these Interrogatories, I/P Engine will limit its
responses to I/P Engine, Inc. Further, with respect to Interrogatories seeking information from
individual persons within I/P Engine, I/P Engine will limit its responses to current employees.
9.

I/P Engine objects to the Interrogatories as overly broad and unduly burdensome

to the extent that they seek information beyond what is available from a reasonable search of I/P
Engine’s files likely to contain relevant or responsive documents and a reasonable inquiry of I/P
Engine’s current employees.
10.

I/P Engine objects to Target’s definition of “‘664 PATENT” (set forth in

Paragraph 2) because the phrase “all underlying patent applications, all continuations,
continuations, continuations-in-part, divisionals, reissues, and any other patent applications in the
‘664 patent family” is overly broad and unduly burdensome as the phrase purports to include
more than the claimed invention of U.S. Patent No. 6,775,664. In responding to these
Interrogatories, I/P Engine will limit its responses to the claims of U.S. Patent No. 6,775,664
identified as asserted claims in either I/P Engine’s Preliminary Disclosure of Asserted Claims
and Pre-Discovery Infringement Contentions, dated November 7, 2011 or November 11, 2011
respectively, I/P Engine’s Second Preliminary Disclosure of Asserted Claims and Infringement

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Contentions, dated February 17, 2012 or I/P Engine’s Third Preliminary Disclosure of Asserted
Claims and Infringement Contentions, dated July 2, 2012.
11.

I/P Engine objects to Target’s definition of “‘420 Patent” (set forth in Paragraph

3) because the phrase “all underlying patent applications, all continuations, continuations,
continuations-in-part, divisionals, reissues, and any other patent applications in the ‘420 patent
family” is overly broad and unduly burdensome as the phrase purports to include more than the
claimed invention of U.S. Patent No. 6,314,420. In responding to these Interrogatories, I/P
Engine will limit its responses to the claims of U.S. Patent No. 6,314,420 identified as asserted
claims in either I/P Engine’s Preliminary Disclosure of Asserted Claims and Pre-Discovery
Infringement Contentions, dated November 7, 2011 or November 11, 2011 respectively, or I/P
Engine’s Second Preliminary Disclosure of Asserted Claims and Infringement Contentions,
dated February 17, 2012 or I/P Engine’s Third Preliminary Disclosure of Asserted Claims and
Infringement Contentions, dated July 2, 2012.
12.

I/P Engine objects to Target’s definition of “Prior Art” (set forth in Paragraph 10)

as overly broad to the extent that it includes “publications, patents, physical devices, prototypes,
uses, sales, and offers for sale, and any DOCUMENTS or OTHER ITEMS evidencing any of the
foregoing” not cited in Target’s response to I/P Engine’s Interrogatory No. 4.
13.

I/P Engine objects to Target’s definition of “ASSERTED CLAIMS” (set forth in

Paragraph 17) as overly broad to the extent that it includes more than the claims identified as
asserted claims in either I/P Engine’s Preliminary Disclosure of Asserted Claims and PreDiscovery Infringement Contentions, dated November 7, 2011 or November 11, 2011
respectively, I/P Engine’s Second Preliminary Disclosure of Asserted Claims and Infringement

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Contentions, dated February 17, 2012 or I/P Engine’s Third Preliminary Disclosure of Asserted
Claims and Infringement Contentions, dated July 2, 2012.
14.

I/P Engine objects to Target’s definition of “Accused Products” (set forth in

Paragraph 18) because the phrase “each and every product that I/P Engine contends is directly
infringing (or otherwise falling within, embodying, or meeting), or is inducing or contributing to
the infringement” is overly broad so as to demand information that is not relevant to the issues
framed by the pleadings.
15.

I/P Engine objects to Target’s definition of “PREDECESSORS-IN-INTEREST”

(set forth in Paragraph 20) because the phrase “all persons or entities other than YOU that have
ever held ownership rights to the PATENTS-IN-SUIT” is overly broad to the extent that it
purports to only include independent third parties. In responding to these Interrogatories, I/P
Engine will limit its responses to the knowledge of I/P Engine, Inc.

SPECIFIC OBJECTIONS
Statements made herein regarding I/P Engine’s intention to provide information or
documents responsive to any given Interrogatory do not necessarily indicate or imply the
existence of any information or documents responsive thereto. Furthermore, any information
provided or referred to herein is not deemed to be a waiver of I/P Engine’s objections as to the
authenticity, competency, relevancy, materiality, privilege or admissibility of evidence in this or
any subsequent proceeding or trial in this or any other action for any purpose whatsoever. In
addition, I/P Engine reserves the right to supplement or amend its responses to the
Interrogatories based upon information, documents, and things it receives during discovery or
obtains upon further investigation.

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Discovery and trial preparation in this matter have not been completed. I/P Engine is
continuing its investigation to obtain information responsive to the Interrogatories. Therefore, all
responses will be given without prejudice to I/P Engine’s right to introduce documents or
information discovered or deemed responsive subsequent to the date of these responses.
In gathering relevant and responsive information, I/P Engine has interpreted the
Interrogatories utilizing ordinary meanings of words and has expended reasonable efforts to
identify information that appears responsive. To the extent that the Interrogatories purport to
seek information other than as so interpreted, I/P Engine objects on the ground that the
Interrogatories are vague, ambiguous and overbroad.
I/P Engine’s responses to the Interrogatories are without waiver or limitation of I/P
Engine’s right to object on the grounds of authenticity, competency, relevancy, materiality,
privilege, admissibility as evidence for any purpose, or any other grounds to the use of any
documents or information in any subsequent proceeding in, or the trial of, this or any other
action.
In accordance with an agreement between the parties, I/P Engine may produce
responsive, third party documents previously received related to this litigation in response to the
Interrogatories. I/P Engine’s producing of such documents does not waive or limit I/P Engine’s,
or any other party’s, right to object on the grounds of authenticity, competency, relevancy,
materiality, privilege, admissibility as evidence for any purpose, or any other grounds to the use
of any documents or information in any subsequent proceeding in, or the trial of, this or any
other action. I/P Engine’s producing of such documents also does not constitute an admission or
representation that the information contained within the documents is known or reasonably

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available to I/P Engine. Additionally, I/P Engine does not have a legal right to obtain or demand
further documents from any third party, or have an established relationship with any third party.

INTERROGATORIES
INTERROGATORY NO. 1:
For each claim of the PATENTS-IN-SUIT you contend is infringed, identify every one of
TARGET’s products that you allege infringes each such claim, provided a detailed explanation,
with all evidence and reasons, how each product meets each element of every claim, whether
such alleged infringement is literal or by equivalents, an explanation of how 35 U.S.C. § 112 ¶ 6
is satisfied for any element you contend is drafted in means plus function form, including
without limitation identification of corresponding structures in the patent specification and the
ACCUSED PRODUCTS and an explanation of how they are the same or equivalent; an
explanation of whether such alleged infringement is direct (i.e., under 35 U.S.C. § 271(a)) or
indirect (i.e., under 35 U.S.C. §§ 271 (b) and (c)); and if indirect, an identification of each third
party whose alleged infringement is direct, and identify all documents and evidence supporting
any such contentions.
RESPONSE:
Plaintiff incorporates its general objections and specific objections. I/P Engine objects to
this Interrogatory to the extent it seeks information that is protected by the attorney-client
privilege, the work product doctrine, Rule 26(b)(4)(B) immunity, or any other applicable
privilege or immunity. I/P Engine further objects to this Interrogatory as overly burdensome to
the extent that it is duplicative of the expert opinion evidence served in this litigation, which has
been provided in accordance with the Federal Rules of Civil Procedure, the Local Rules of the

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Court, or the Court’s scheduling orders. Subject to and without waiving the foregoing
objections, I/P Engine responds:
I/P Engine served its Preliminary Disclosures of Asserted Claims and Pre-Discovery
Infringement Contentions as to Google, Inc. on November 7, 2011 and its Preliminary Disclosure
of Asserted Claims and Pre-Discovery Infringement Contention as to Target Corporation’s Use
of Google Adwords and Google Adsense for Search on November 11, 2011. I/P Engine also
served its Second Preliminary Disclosure of Asserted Claims and Infringement Contentions as to
Target Corporation’s Use of Google Adwords and Google Adsense for Search on February 17,
2012 and its Third Preliminary Disclosure of Asserted Claims and Infringement Contentions as
to Target Corporation’s Use of Google Adwords and Google Adsense for Search on July 2,
2012. I/P Engine further served the Expert Report of Ophir Frieder on Infringement of U.S.
Patent Nos. 6,314,420 and 6,775,664 on July, 25, 2012. I/P Engine hereby incorporates those
contentions and disclosures by reference and submits that its response to this Interrogatory may
be derived from those disclosures and contentions. I/P Engine’s contentions and the Expert
Report of Ophir Frieder are based on the knowledge known at this time, and are subject to
change based on ongoing discovery, additional evidence, and/or further investigation. I/P
Engine and its expert Dr. Frieder reserve the right to amend and/or supplement the infringement
contentions or the expert report if and when further information becomes available.
FIRST SUPPLEMENTAL RESPONSE:
Plaintiff incorporates its general objections and specific objections. I/P Engine objects to
this Interrogatory to the extent it seeks information that is protected by the attorney-client
privilege, the work product doctrine, Rule 26(b)(4)(B) immunity, or any other applicable
privilege or immunity. I/P Engine further objects to this Interrogatory as overly burdensome to

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the extent that it is duplicative of the expert opinion evidence served in this litigation, which has
been provided in accordance with the Federal Rules of Civil Procedure, the Local Rules of the
Court, or the Court’s scheduling orders. Subject to and without waiving the foregoing
objections, I/P Engine responds:
I/P Engine served its Preliminary Disclosures of Asserted Claims and Pre-Discovery
Infringement Contentions as to Google, Inc. on November 7, 2011 and its Preliminary Disclosure
of Asserted Claims and Pre-Discovery Infringement Contention as to Target Corporation’s Use
of Google Adwords and Google Adsense for Search on November 11, 2011. I/P Engine also
served its Second Preliminary Disclosure of Asserted Claims and Infringement Contentions as to
Target Corporation’s Use of Google Adwords and Google Adsense for Search on February 17,
2012 and its Third Preliminary Disclosure of Asserted Claims and Infringement Contentions as
to Target Corporation’s Use of Google Adwords and Google Adsense for Search on July 2,
2012. I/P Engine further served the Expert Report of Ophir Frieder on Infringement of U.S.
Patent Nos. 6,314,420 and 6,775,664 on July, 25, 2012. I/P Engine further served the Updated
Expert Report of Ophir Frieder on Infringement of U.S. Patent Nos. 6,314,420 and 6,775,664
on September 4, 2012. I/P Engine hereby incorporates those contentions and disclosures by
reference and submits that its response to this Interrogatory may be derived from those
disclosures and contentions. I/P Engine’s contentions and the Expert Report of Ophir Frieder are
based on the knowledge known at this time, and are subject to change based on ongoing
discovery, additional evidence, and/or further investigation. I/P Engine and its expert Dr. Frieder
reserve the right to amend and/or supplement the infringement contentions or the expert report if
and when further information becomes available.

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INTERROGATORY NO. 2:
If you contend that you are entitled to any monetary recovery as a result of alleged
INFRINGEMENT of the PATENTS-IN-SUIT by TARGET, state whether you contend that you
are entitled to lost profits or a reasonable royalty, and state all facts, evidence, and reasons upon
which you rely in support of your contention, such that if you contend you are entitled to an
award of lost profits damages, you identify each of your products you allege falls within the
scope of any claim of the PATENTS-IN-SUIT and state the total sales annually in units and
dollars from its introduction to the present, and if you contend you are entitled to an award of
reasonable royalty damages, state what you assert to be a reasonable royalty to be paid by
TARGET under 35 U.S.C. Section 284, including the complete factual bases on which you base
your calculation of such royalty rate.
RESPONSE:
Plaintiff incorporates its general objections and specific objections. I/P Engine objects to
this Interrogatory to the extent it seeks information that is protected by the attorney-client
privilege, the work product doctrine, Rule 26(b)(4)(B) immunity, or any other applicable
privilege or immunity. I/P Engine further objects to this Interrogatory as overly burdensome to
the extent that it is duplicative of the expert opinion evidence served in this litigation, which has
been provided in accordance with the Federal Rules of Civil Procedure, the Local Rules of the
Court, or the Court’s scheduling orders. Subject to and without waiving the foregoing
objections, I/P Engine responds:
I/P Engine seeks compensatory damages, past and future, amounting to no less than
reasonable royalties and prejudgment interest to compensate it for Target’s infringement. I/P
Engine served the Expert Report of Dr. Stephen L. Becker, Ph.D. on July 25, 2012. I/P Engine

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hereby incorporates this disclosure by reference and submits that its response to this
Interrogatory may be further derived from this disclosure. The Expert Report of Dr. Stephen L.
Becker, Ph.D. is based on the knowledge known at this time, and is subject to change based on
ongoing discovery, additional evidence, and/or further investigation. I/P Engine and its expert
Dr. Becker reserve the right to amend and/or supplement the expert report if and when further
information becomes available.
INTERROGATORY NO. 3:
In reference to TARGET’s affirmative defense of laches, state whether YOU contend that
any delay by YOU or the PREDECESSORS-IN-INTEREST in asserting the PATENTS-INSUIT against TARGET was reasonable or excusable, and for any such delay that YOU contend
was reasonable or excusable, IDENTIFY the length of and all reasons or excuses for the delay,
all facts that support any contention that this delay was reasonable or excusable, all
DOCUMENTS that support any such contention, and all PERSONS with knowledge of the facts
or the DOCUMENTS that support such contention.
RESPONSE:
Plaintiff incorporates its general objections and specific objections. I/P Engine objects to
the premise of this Interrogatory, in that it assumes an unsupported legal conclusion, e.g., that
there was a legally cognizable “delay . . . in asserting the PATENTS-IN-SUIT”. I/P Engine
further objects to this Interrogatory to the extent it seeks information that is protected by the
attorney-client privilege, the work product doctrine, Rule 26(b)(4)(B) immunity, or any other
applicable privilege or immunity. I/P Engine further objects to this Interrogatory to the extent
that it seeks a legal conclusion or information not in I/P Engine’s possession, custody or control.
I/P Engine further objects to this Interrogatory as vague and overly burdensome, particularly to

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the extent that it seeks whether I/P Engine contends that any delay by “PREDECESSORS-ININTEREST in asserting the PATENTS-IN-SUIT against TARGET was reasonable or
excusable.” I/P Engine further objects to this Interrogatory as overly burdensome, particularly to
the extent that Target has not set forth any facts as to how it has suffered any material prejudice
as a result of any alleged delay, of which the burden of proof lies with Target. Subject to and
without waiving the foregoing objections, I/P Engine responds:
I/P Engine contends that it did not unreasonably delay in asserting the patents-in-suit
against Target or any other defendant. With respect to the alleged presumption of laches, it
must be shown that the “patentee delayed filing suit for more than six years after actual or
constructive knowledge of the defendant’s alleged infringing activity.” Aukerman Co. v. R.L.
Chaides Const. Co., 960 F.2d 1020, 1035-36 (Fed. Cir. 1992). Neither Target, nor any other
defendant, has set forth any evidence showing that any entity knew or should have known of
Defendants’ infringing activity for at least six years prior to filing the present litigation. To the
extent Target relies upon Google’s laches defense as it is Google’s accused product in question,
in Google’s response to I/P Engine’s Interrogatory No. 13 to Google, Google cites two unrelated
documents from third parties as supposed evidence of “pervasive, open, notorious activities” by
Google. The documents contain third party statements speculating that “Google apparently
filters some AdWords”, and do not even appear to describe the “Quality Score” or “pCTR” that
I/P Engine has accused of infringing its patents in this litigation. To the extent the documents
can be said to describe anything, the documents appear to refer to prior, non-accused iterations of
the AdWords system. These speculative documents do not reflect “pervasive, open, notorious
activities” that could trigger a duty to investigate. This “evidence” is not sufficient to create a

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presumption of laches. Absent a showing that the rebuttable presumption should attach, there is
no presumption of latches for I/P Engine to rebut.
Further, Lycos was enforcing patents that are related to the patents-in-suit against others
from at least January 2007 to January 2011. See Confidential Videotaped Deposition of Mark
Blais, July 31, 2012, pages 53-94; see also LYCOS0000001-25; see also Complaint, Lycos, Inc.
v. Tivo, Inc. et al., No. 2:07-cv-3 (E. D. Va. Jan. 10, 2007), D.I. 1; ORDER Granting MOTION
to Transfer Venue, Lycos, Inc. v. Tivo, Inc. et al., No. 2:07-cv-3 (E. D. Va. Aug. 8, 2007), D.I.
37; Case Transferred In-District Transfer, Lycos, Inc. v. Tivo, Inc. et al., No. 1:07-cv11469(MLW) (D. Mass. Aug. 9, 2007), D.I. 38; Order Dismissing Case, Lycos, Inc. v. Tivo, Inc.
et al., No. 1:07-cv-11469(MLW) (D. Mass. Jan. 10, 2011), D.I. 224. Therefore, the application
of laches is suspended for at least that time period. Aukerman, 960 F.2d at 1033 (“A court must
also consider and weigh any justification offered by the plaintiff for its delay. Excuses which
have been recognized in some instances . . . include: litigation . . . .”).
Alex Berger of I/P Engine, Mark Blais of Lycos, Don Kosak and Ken Lang, agents,
executives and employees of Target and Google have knowledge of the facts supporting the
above contentions.
INTERROGATORY NO. 4:
In reference to TARGET’s affirmative defense of laches, state whether YOU contend that
TARGET did not suffer prejudice as a result of the delay by YOU or the PREDECESSORS-ININTEREST in asserting the PATENTS-IN-SUIT against TARGET, and IDENTIFY all facts that
support any contention that TARGET did not suffer prejudice, all DOCUMENTS that support
any such contention, and all PERSONS with knowledge of the facts or the DOCUMENTS that
support such contention.

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RESPONSE:
Plaintiff incorporates its general objections and specific objections. I/P Engine objects to
the premise of this Interrogatory, in that it assumes an unsupported legal conclusion, e.g., that
there was a legally cognizable “delay . . . in asserting the PATENTS-IN-SUIT”. I/P Engine
further objects to this Interrogatory to the extent it seeks information that is protected by the
attorney-client privilege, the work product doctrine, Rule 26(b)(4)(B) immunity, or any other
applicable privilege or immunity. I/P Engine further objects to this Interrogatory to the extent
that it seeks a legal conclusion or information not in I/P Engine’s possession, custody or control.
I/P Engine further objects to this Interrogatory as vague and overly burdensome, particularly to
the extent that it seeks whether I/P Engine contends that “TARGET did not suffer prejudice as a
result of the delay by…the PREDECESSORS-IN-INTEREST in asserting the PATENTS-INSUIT against TARGET.” I/P Engine further objects to this Interrogatory as overly burdensome,
particularly to the extent that Target has not set forth any facts as to how it has suffered prejudice
as a result of any alleged delay. I/P Engine further objects to this Interrogatory as overly
burdensome, particularly to the extent that Target has not set forth any facts as to how it has
suffered any material prejudice as a result of any alleged delay, of which the burden of proof lies
with Target. Subject to and without waiving the foregoing objections, I/P Engine responds:
To prevail on a defense of laches, Target, or any of the other defendants, must prove that:
(1) I/P Engine delayed filing suit for an unreasonable and inexcusable length of time from the
time it knew or reasonably should have known of its claim against Target, or any of the other
defendants, and (2) the delay operated to the prejudice or injury of Target, or any of the other
defendants. Target and, based on its response to I/P Engine’s Interrogatory No. 13 to Google,
Google have not alleged any facts that any alleged delay operated to the prejudice or injury of

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Target, or any other defendant. Consequently, there is no evidence for I/P Engine to rebut as to
whether Target, or any of the other defendants, suffered any prejudice.
With respect to the alleged presumption of laches, it must be shown that the “patentee
delayed filing suit for more than six years after actual or constructive knowledge of the
defendant’s alleged infringing activity.” Aukerman Co. v. R.L. Chaides Const. Co., 960 F.2d
1020, 1035-36 (Fed. Cir. 1992). Neither Target, nor any other defendant, have set forth any
evidence showing that any entity knew or should have known of Defendants’ infringing activity
for at least six years prior to filing the present litigation. To the extent Target relies upon
Google’s laches defense as it is Google’s accused product in question, in Google’s response to
I/P Engine’s Interrogatory No. 13 to Google, Google cites two unrelated documents from third
parties as supposed evidence of “pervasive, open, notorious activities” by Google. The
documents contain third party statements speculating that “Google apparently filters some
AdWords”, and do not even appear to describe the “Quality Score” or “pCTR” that I/P Engine
has accused of infringing its patents in this litigation. To the extent the documents can be said to
describe anything, the documents appear to refer to prior, non-accused iterations of the AdWords
system. These speculative documents do not reflect “pervasive, open, notorious activities” that
could trigger a duty to investigate. This “evidence” is not sufficient to create a presumption of
laches. Absent a showing that the rebuttable presumption should attach, there is no presumption
of latches for I/P Engine to rebut.
Further, Lycos was enforcing patents that are related to the patents-in-suit against others
from at least January 2007 to January 2011. See Confidential Videotaped Deposition of Mark
Blais, July 31, 2012, pages 53-94; see also LYCOS0000001-25; see also Complaint, Lycos, Inc.
v. Tivo, Inc. et al., No. 2:07-cv-3 (E. D. Va. Jan. 10, 2007), D.I. 1; ORDER Granting MOTION

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to Transfer Venue, Lycos, Inc. v. Tivo, Inc. et al., No. 2:07-cv-3 (E. D. Va. Aug. 8, 2007), D.I.
37; Case Transferred In-District Transfer, Lycos, Inc. v. Tivo, Inc. et al., No. 1:07-cv11469(MLW) (D. Mass. Aug. 9, 2007), D.I. 38; Order Dismissing Case, Lycos, Inc. v. Tivo, Inc.
et al., No. 1:07-cv-11469(MLW) (D. Mass. Jan. 10, 2011), D.I. 224. Therefore, the application
of laches is suspended for at least that time period. Aukerman, 960 F.2d at 1033 (“A court must
also consider and weigh any justification offered by the plaintiff for its delay. Excuses which
have been recognized in some instances . . . include: litigation . . . .”).
To the extent that a presumption of laches exists, which again, neither Target nor any
other defendant has shown, the presumption may be eliminated by I/P Engine with “an offer of
evidence sufficient to place the matters of defense prejudice and economic prejudice genuinely
in issue.” Id. at 1037. This means that the “presumption of laches plays no role in the ultimate
decision.” Id. Target has not been prejudiced.
Material prejudice to adverse parties resulting from the plaintiff’s delay is essential to the
laches defense. Such prejudice may be either economic or evidentiary. Id. at 1033 (citing
Cornetta v. United States, 851 F.2d 1372, 1378 (Fed. Cir. 1988)). Evidentiary prejudice arises
by reason of a defendant’s inability to present a full and fair defense on the merits due to the loss
of records, the death of a witness, or the unreliability of memories of long past events, thereby
undermining the court’s ability to judge the facts. Id. (citing Barrois v. Nelda Faye, Inc., 597
F.2d 881, 885 (5th Cir. 1979), Smith v. Sinclair Ref. Co., 257 F.2d 328, 330 (2d Cir. 1958),
Gillons v. Shell Co., 86 F.2d 600, 608-09 (9th Cir. 1936), cert. denied, 302 U.S. 689, 58 S.Ct. 9,
82 L.Ed. 532 (1937) and VI Restatement Law of Torts § 939 (1936)). Economic prejudice arises
where a defendant and possibly others will suffer the loss of monetary investments or incur
damages which likely would have been prevented by earlier suit. Id. (citing A.C. Aukerman Co.

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v. Miller Formless Co., 693 F.2d 697, 701 (7th Cir. 1982), American Home Prods.Corp. v.
Lockwood Mfg. Co., 483 F.2d 1120, 1124 (6th Cir. 1973) (opinion by Judge Stevens, later Justice
Stevens), cert. denied, 414 U.S. 1158, 94 S.Ct. 917, 39 L.Ed.2d 110 (1974) and Yates v. Smith,
271 F. 27, 31 (D.N.J. 1920)). Such damages or monetary losses are not merely those attributable
to a finding of liability for infringement. Id. (citing Jenn-Air Corp. v. Penn Ventilator Co., 464
F.2d 48, 49-50 (3d Cir. 1972)). Economic prejudice would then arise in every suit. Id. (citing
Cornetta v. United States, 851 F.2d 1372, 1380-82 (Fed. Cir. 1988)). Courts must look for a
change in the economic position of the alleged infringer during the period of delay. Id. (citing
Lake Caryonah Improvement Ass’n. v. Pulte Home Corp., 903 F.2d 505, 510 (7th Cir. 1990)).
“Economic prejudice is not a simple concept but rather is likely to be a slippery issue to resolve.”
Id. (citing Chisum, § 19.05[2][c]).
Neither Target, nor any other defendant has claimed economic prejudice, nor has Target,
or any other defendant suffered economic prejudice resulting from I/P Engine’s alleged delay.
See e.g., G-IPE-0218431-448; G-IPE-0218778-781; G-IPE-0867397; G-IPE-0867398; G-IPE0867399; G-IPE-0867400; G-IPE-0867401-403; G-IPE-0867404-406; G-IPE-0867407-409; GIPE-0867410-412; TAR-IPE-0000504; see also Confidential Videotaped Deposition of Sanja
Datta, June 12, 2012, at pages 21-60, 86-101; Confidential Videotaped Deposition of James
Christopherson, June 20, 2012, at pages 58-65; see also Expert Report of Stephen L. Becker,
Ph.D., July 25, 2012. Further, neither Target, nor any other defendant has claimed evidentiary
prejudice, nor has Target, or any other defendant suffered any evidentiary prejudice because of
I/P Engine’s alleged delay. See e.g., Confidential Videotaped Deposition of Ken Lang, May 17,
2012; Confidential Videotaped Deposition Donald Kosak, May 31, 2012; Confidential
Videotaped Deposition of Jonathan Alferness, June 21, 2012; Rough Draft Transcript of

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Bartholomew Furrow, August 3, 2012; Confidential Videotaped Deposition of James
Christopherson, June 20, 2012.
Alex Berger of I/P Engine, Mark Blais of Lycos, Don Kosak and Ken Lang, agents,
executives and employees of Target and Google have knowledge of the facts supporting the
above contentions.
Dated: September 4, 2012

By:
/s/ Charles J. Monterio, Jr.
Jeffrey K. Sherwood
Frank C. Cimino, Jr.
Kenneth W. Brothers
Dawn Rudenko Albert
Charles J. Monterio, Jr.
DICKSTEIN SHAPIRO LLP
1825 Eye Street, NW
Washington, DC 20006
Telephone: [phone]
Facsimile: [phone]
Donald C. Schultz
W. Ryan Snow
CRENSHAW, WARE & MARTIN PLC
150 West Main Street
Norfolk, VA 23510
Telephone: [phone]
Facsimile: [phone]
Counsel for Plaintiff I/P Engine, Inc.

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CERTIFICATE OF SERVICE

I hereby certify that on this 4th day of September, 2012, the foregoing PLAINTIFF I/P
ENGINE, INC.’S FIRST SUPPLEMENTAL RESPONSES AND OBJECTIONS TO
DEFENDANT TARGET CORP.’S FIRST SET OF INTERROGATORIES, was served via
email, on the following:

Stephen Edward Noona
Kaufman & Canoles, P.C.
150 W Main St
Suite 2100
Norfolk, VA 23510
[e-mail]
David Bilsker
David Perlson
Quinn Emanuel Urquhart & Sullivan LLP
50 California Street, 22nd Floor
San Francisco, CA 94111
[e-mail]
[e-mail]
Robert L. Burns
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
Two Freedom Square
11955 Freedom Drive
Reston, VA 20190
[e-mail]
Cortney S. Alexander
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
3500 SunTrust Plaza
303 Peachtree Street, NE
Atlanta, GA 94111
[e-mail]

/s/ Armands Chagnon
Senior Paralegal

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