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

Filing 88

Memorandum in Support re 87 MOTION to Compel Plaintiff to Provide Conception, Reduction-to-Practice, and Priority Date Information for the Patents-in-Suit filed by Google, Inc.. (Noona, Stephen)

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF VIRGINIA
NORFOLK DIVISION

I/P ENGINE, INC.
Plaintiff,
v.

Civil Action No. 2:11-cv-512

AOL, INC., et al.,
Defendants.

BRIEF IN SUPPORT OF GOOGLE’S MOTION TO COMPEL PLAINTIFF TO
PROVIDE CONCEPTION, REDUCTION-TO-PRACTICE, AND PRIORITY DATE
INFORMATION FOR THE PATENTS-IN-SUIT
I.

INTRODUCTION
Pursuant to Federal Rule of Civil Procedure 37, Defendant Google Inc. (“Google”)

moves to compel Plaintiff I/P Engine, Inc. (“Plaintiff”) to provide complete responses to
Google’s Interrogatories seeking routine information regarding the patents-in-suit, including
definite priority dates, conception dates, and reduction-to-practice dates. Plaintiff has repeatedly
refused to provide a direct answer to these straightforward Interrogatories. As to the patents’
priority date – the date used to establish the novelty of the patented inventions relative to other
art – Plaintiff stated that “the asserted claims of the patents-in-suit are entitled to a priority date
at least as early as the effective date of the ‘420 patent, i.e., December 3, 1998.” (emphasis
added). But Plaintiff refused to state whether it would rely on an earlier priority date, and in fact
leaves open the possibility that it will do so. As to the conception and reduction-to-practice dates

– the dates the patented inventions were firmly conceived in the inventors’ minds and embodied
in workable form, respectively – Plaintiff has refused to provide any of this information.
Plaintiff has never denied that it has the ability to provide the requested conception,
reduction-to-practice, and priority date information to Google. Nor could it. Both named
inventors are Plaintiff’s employees or consultants. And Plaintiff has long had custody of at least
one inventor’s documents. Thus, Plaintiff has ample means to determine the patents’ priority
date, conception date, reduction-to-practice date, and the individuals involved in conception and
reduction to practice. Plaintiff just refuses to provide this information to Google. As to the
requested conception and reduction-to-practice information, Plaintiff has stated that it will
identify documents containing this information after reviewing the document production of thirdparty Lycos, Inc. This is flatly improper, as Plaintiff’s relationship with the inventors and
custody of their documents allows Plaintiff to provide the requested information without the
need for third-party input. Moreover, Plaintiff must provide a direct written response to this
Interrogatory rather than merely identifying documents, since documents themselves would not
disclose any definitive conception and reduction-to-practice date, or what Plaintiff contends
those dates are.
There can be no legitimate dispute that Google’s requested information is relevant. It is
routine for patent defendants to seek information on the conception, reduction-to-practice, and
priority date of the patents-in-suit, and a defendant’s ability to present its case is greatly impaired
if the plaintiff refuses to provide this information. For instance, Google cannot focus its prior art
search on references that pre-date the patents’ priority date without knowing what priority date
Plaintiff believes the patents are entitled to. Similarly, Plaintiff’s refusal to provide this
information prevents Google from knowing what topics to explore in future discovery. For

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instance, if Plaintiff asserts a conception or priority date that is the same as the filing date of the
patent applications, then Google need not explore whether the inventors were diligent in
reducing the invention to practice after they conceived it. By contrast, if Plaintiff asserts
conception and priority dates that are significantly earlier than the filing date of the patent
applications, then the inventors’ diligence in reducing the invention to practice could be a critical
issue in this case. By refusing to provide conception, reduction-to-practice, and priority dates,
Plaintiff frustrates Google’s ability to determine the key issues in this case. By the same token,
Plaintiff’s refusal to list the individuals who were involved in conception and reduction-topractice makes it impossible for Google to determine who must be deposed on these topics.
For all these reasons, Google respectfully requests that the Court compel Plaintiff to
provide the patents’ priority dates, conception dates, reduction-to-practice dates, and the names
of the individuals involved in conception and reduction-to-practice.
II.

FACTUAL BACKGROUND
A.

Google Seeks on Information on Conception, Reduction-to-Practice, and
Priority Dates; Plaintiff Refuses to Provide This Information

On November 7, 2011, Google served Interrogatory No. 1 on Plaintiff. This
Interrogatory reads as follows:
For each asserted claim of the PATENTS-IN-SUIT, describe in detail all facts
RELATING TO its conception and reduction to practice, including but not limited
to: IDENTIFYING the date of conception, the date of reduction to practice of its
subject matter, all acts YOU contend represent diligence occurring between the
dates of conception and reduction to practice, each person involved in such
conception, diligence and/or reduction to practice, where the invention was first
reduced to practice, when, where, and to whom the invention was first disclosed,
and IDENTIFYING each person, including third parties, who worked on the
development of the alleged invention(s) described and claimed in the PATENTSIN-SUIT, describing each person’s role (e.g., producer, developer, tester,
technician, researcher, etc.), the dates and places each such person assisted,
supervised, or was otherwise so involved, and the identity of all documents
evidencing conception, diligence and reduction to practice.

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(Kammerud Decl., Ex. A at 5).
On December 7, 2011, Plaintiff responded to Interrogatory No. 1. Plaintiff’s response,
however, contained no substantive information. Rather, Plaintiff stated: “I/P Engine, under Rule
33(d) of the Federal Rules of Civil Procedure, will produce documents from which information
responsive to this Interrogatory may be derived or ascertained.” (Id. at 5-6). From the time of
Plaintiff’s response until the present day, Plaintiff has not identified any documents that
supposedly contain information responsive to Interrogatory No. 1.
Also on November 7, 2011, Google served Interrogatory No. 9 on Plaintiff. This
Interrogatory asked: “For each of the PATENTS-IN-SUIT state the priority date PLAINTIFF
claims for each claim and identify the portion(s) of the specification in any earlier application
that support that priority date.” (Id. at 14). Plaintiff responded on December 7, 2011, stating:
Each of the asserted claims of the patents-in-suit are entitled to a priority date at
least as early as the effective date of the ‘420 patent, i.e., December 3, 1998
(based on the filing date of the patent application, U.S. Patent Application No.
09/204,149, that issued as the ‘420 patent). Additionally, each of the asserted
claims of the patents-in-suit may be entitled to an earlier effective date based on,
without limitation, the filing of earlier related patent applications.
(Id. (emphasis added).) Plaintiff has never supplemented its response to confirm the December
3, 1998 priority date or to provide an earlier date. Plaintiff’s response that the priority date is “at
least as early as” December 3, 1998 does not provide a definite priority date because it allows the
priority date to be any date on or before December 3, 1998.
B.

Plaintiff’s Continued Refusal to Provide This Information Despite Google’s
Meet-and-Confer Efforts

On December 13, 2011, Google sent a letter pointing out that Plaintiff had failed to
provide a substantive response to Interrogatory Nos. 1 or 9. (Id.., Ex. B). On December 19,
2011, Plaintiff’s counsel responded that “[o]nce defendants make a prima facie showing that a
priority date earlier than the date identified in plaintiff's interrogatory response is relevant,
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plaintiff will review and supplement as appropriate.” (Id., Ex. C). In response, Google pointed
out that numerous courts have rejected the proposition that a patent plaintiff need not provide
conception and reduction-to-practice dates until the defendant identifies its alleged prior art,
citing a number of supporting cases. (Id., Ex. D). Plaintiff made no response.
On December 22, 2011, the parties met and conferred by telephone regarding Plaintiff’s
refusal to provide a substantive response to Interrogatory No. 1 and its refusal to provide a
definite priority date in response to Interrogatory No. 9. On this call, Plaintiff stated that it
would supplement its response to Interrogatory No. 1 only after it reviewed documents produced
by third-party Lycos (in response to a subpoena served by Google, not Plaintiff). (Id., ¶ 6).
Plaintiff took this position even though both named inventors of the patents-in-suit are Plaintiff’s
employees or consultants and Plaintiff had custody of one if not both inventors’ documents.
During this call, Plaintiff also stated that the priority date for the patents-in-suit is December 3,
1998, but that it had not decided whether it would rely on earlier patent applications to pursue an
earlier priority date. (Id.) In other words, Plaintiff refused to state whether it would contend that
the patents-in-suit can claim priority to any pre-December 3, 1998 applications from the same
patent family.
In a January 10, 2012 letter, Plaintiff stated that it would supplement its response to
Interrogatory No. 9 (seeking the patents’ priority date) “when it deems it is appropriate to do so
based on whether I/P Engine plans to use any date earlier than the identified date of December 3,
1998.” (Id., Ex. E at 3). As to Interrogatory No. 1 (seeking the patents’ conception date,
reduction-to-practice date, and the individuals involved in conception and reduction-to-practice),
Plaintiff reiterated that it would supplement its response by identifying specific documents once
it had a chance to review Lycos’ document production. (Id.)

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In an email of February 8, 2012, Google summarized the parties’ respective positions on
Interrogatory Nos. 1 and 9, noted that the parties appear to be at an impasse, and made one final
request that Plaintiff reconsider its position and provide adequate responses to these
Interrogatories. (Id., Ex. F). Plaintiff wrote back the next day, reiterating its prior positions on
both Interrogatories. (Id., Ex. G). Accordingly, Google has no choice but to bring the present
Motion to Compel.
III.

ARGUMENT
A.

Plaintiff Must Provide Definite Priority Dates

As recounted above, Plaintiff has refused to provide definite priority dates in response to
Google’s Interrogatory No. 9. Plaintiff’s Interrogatory Response states that “[e]ach of the
asserted claims of the patents-in-suit are entitled to a priority date at least as early as the
effective date of the ‘420 patent, i.e., December 3, 1998” (emphasis added), but Plaintiff has
never supplemented this response to provide a definite priority date. Moreover, Plaintiff’s
communications with Google repeatedly stated that Plaintiff might assert an earlier priority date
at some undisclosed future time.
It is improper for Plaintiff to provide such an ambiguous priority date. Rather, as
numerous courts have recognized, a patent plaintiff must provide a definite and firm priority date
so that the defendant can focus its prior art search on references that pre-date that priority date.
See, e.g., McKesson Info. Solutions LLC v. Epic Sys. Corp., 242 F.R.D. 689, 692 (N.D. Ga. 2007)
(“Because the threshold question of whether the prior art is in fact ‘prior’ depends upon the ‘898
patent’s priority date, the information Epic seeks [] is unquestionably relevant to a ‘claim or
defense,’ and thus McKesson may not refuse to produce it”); see also In re Papst Licensing
GMBH & Co. KG Litig., 252 F.R.D. 7, 17 (D.D.C. 2008) (“Papst’s response that conception

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happened at an unknown time period between January and October 1996 is clearly overbroad
and cannot be sustained . . . Papst’s failure to respond directly and candidly has sent its
opponents down a rabbit hole, trying to ascertain prior art.”); Invacare Corp. v. Sunrise Med.
Holdings, Inc., No. 04-1439, 2005 WL 1750271, *3-4 (N.D. Ohio Jan. 21, 2005) (“Defendant
claims that in order to ascertain the relevant prior art, plaintiff must provide the exact dates of
conception and reduction to practice . . . the Court finds that plaintiff must provide a more
definite response to defendant’s interrogatory. Plaintiff’s responses are essentially nonresponses in that they entirely leave open the critical time period, i.e., the earliest date on which
the invention was conceived and reduced to practice.”)
Plaintiff’s position that it need not provide a priority date until Google makes a prima
facie showing of invalidity (Kammerud Decl., Ex. C) puts the cart before the horse. As noted
above, a plaintiff must provide a definite and firm priority date precisely so that the defendant
may focus its prior art search on references that pre-date the stated priority date. For this reason,
courts have soundly rejected the proposition that a defendant must make a prima facie invalidity
case before being entitled to the plaintiff’s asserted priority date. See McKesson, 242 F.R.D. at
692 (“Epic does not have to establish a prima facie case of invalidity in order to obtain discovery
on the ‘898 patent’s priority date”); Lamoureux v. Genesis Pharm. Serv’s, Inc., 226 F.R.D. 154,
157-60 (D. Conn. 2004).
In any event, Google has made a prima facie invalidity showing. Specifically,
Defendants’ Preliminary Invalidity Contentions (served on January 24, 2012) cite no less than
seven prior art references that invalidate the patents-in-suit. (Kammerud Decl., Ex. H). Thus,
even under Plaintiff’s own incorrect logic, it is past time for Plaintiff to provide definite priority
dates for the patents-in-suit.

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For all these reasons, Google respectfully requests that the Court compel Plaintiff to
provide definite priority dates for the patents-in-suit. If Plaintiff believes that the patents are
entitled to a priority date of December 3, 1998, it should plainly say so – rather than making the
ambiguous response that the priority date is “at least as early as” this date. Conversely, if
Plaintiff believes that the patents are entitled to a priority date earlier than December 3, 1998, it
should provide this earlier date – rather than stating that it might provide an earlier priority date
at some future time.
B.

Plaintiff Must Provide Conception Dates, Reduction-to-Practice Dates,
and the Persons Involved in Conception and Reduction-to-Practice

As recounted above, Plaintiff has also refused to identify conception dates, reduction-topractice dates, and the individuals involved in conception and reduction-to-practice in response
to Google’s Interrogatory No. 1. Plaintiff responded to this Interrogatory by stating that it would
produce responsive documents pursuant to Rule 33(d), and Plaintiff later stated that it would
“supplement its response with bates range numbers, etc. once it has had a chance to review
Lycos’s document production.” (Kammerud Decl., Ex. E at 3). To date, Plaintiff has not
supplemented its response to this Interrogatory in any manner whatsoever.
Plaintiff’s position on this Interrogatory is unjustified on numerous levels. First, the
documents alone will not provide any clear date of when conception or reduction-to-practice
occurred, making Rule 33(d) inapplicable. Nor will documents disclose Plaintiff’s contentions
on this subject. Rather, Google can only discern Plaintiff’s contentions about when conception
and reduction-to-practice occurred if Plaintiff gives a direct, written Interrogatory response that
plainly states this information.
Second, both named inventors are Plaintiff’s employees or consultants, and Plaintiff
possesses the documents of at least the first named inventor, Andrew “Ken” Lang. (Id., Ex. I).

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As for the other named inventor, Donald Kosak, Plaintiff alleges that Lycos possesses Mr.
Kosak’s documents – yet Plaintiff also stated that it “recently received Lycos’s permission to
produce them to Defendants.” (Id., Ex. J). Thus, Plaintiff apparently has sufficient control over
Mr. Kosak’s documents to produce them to Defendants (even though this production has not yet
been made.)
A plaintiff cannot respond to a conception and reduction-to-practice interrogatory by
merely producing documents under Rule 33(d) where (as here) the plaintiff’s close relationship
with the inventors would allow it to provide a direct response. See, e.g., Fresenius Med. Care
Holding Inc. v. Baxter Intern., Inc., 224 F.R.D. 644, 650 (N.D. Cal. 2004) (ordering patentowner to respond to a conception and reduction-to-practice interrogatory “without reference to
Rule 33(d),” while crediting the opposing party’s argument that “Rule 33(d) procedures are not
available to Baxter . . . because Baxter has access to the inventors and can interview them at
will.”); Boston Sci. Corp. v. Micrus Corp., No. 04-4072, 2007 WL 174475, *1 (N.D. Cal. Jan.
22, 2007) (rejecting plaintiff’s attempt to “point[] to documents and testimony of inventors” in
response to an interrogatory seeking patent conception dates.)
Third, it is unjustifiable for Plaintiff to delay its response to Interrogatory No. 1 until it
reviews Lycos’s document production. While Lycos was a former owner of the patents-in-suit,
both named inventors are Plaintiff’s employees or consultants and Plaintiff possesses the
documents of named inventor Andrew Lang. Thus, Plaintiff can identify the patents’ conception
date, reduction-to-practice date, and the individuals involved in conception and reduction-topractice based on the files and recollections of the inventors themselves. If Plaintiff uncovers
additional relevant information after reviewing Lycos’ production, then Plaintiff of course has
the right (and the duty) to supplement its Interrogatory response. See Fed. R. Civ. P. 26(e). But

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Plaintiff cannot delay any response until some unspecified future time after it has reviewed
Lycos’s document production. This case is on a tight discovery schedule, and Google is entitled
to a prompt Interrogatory response regarding the patents’ conception and reduction-to-practice so
that it can properly take depositions or serve document subpoenas on this topic.
In any event, Lycos has produced its documents over a month ago. (Kammerud Decl.,
Ex. K). Thus, even under Plaintiff’s own logic, it is time for Plaintiff to provide Google’s
requested conception and reduction-to-practice information. For the reasons stated above,
Google should not be forced to wait some unspecified time until Plaintiff fully digests Lycos’s
document production. Rather, Google is entitled to a prompt Interrogatory response, regardless
of the speed with which Plaintiff chooses to review Lycos’s production.
IV.

CONCLUSION
For the foregoing reasons, Google respectfully requests that the Court compel Plaintiff to

provide definite priority dates in response to Google’s Interrogatory No. 9. Google also
respectfully requests that Court compel Plaintiff to provide definite conception dates, reductionto-practice dates, and the names of the individuals involved in conception and reduction-topractice, without resort to the procedures of Rule 33(d).
DATED: February 13, 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
Telephone: [phone]
Facsimile: [phone]
[e-mail]
David Bilsker
David A. Perlson
QUINN EMANUEL URQUHART &
SULLIVAN, LLP

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50 California Street, 22nd Floor
San Francisco, California 94111
Telephone: [phone]
Facsimile: [phone]
[e-mail]
[e-mail]
Attorneys for Google Inc.

CERTIFICATE OF CONSULTATION
In accordance with Local Rule 37(E), I certify that counsel conferred in good faith to
resolve the this dispute prior to the filing of the present Motion to Compel. Counsel’s meet-andconfer efforts are set forth in Section II(B) of Google’s brief, and included a telephonic meetand-confer on December 22, 2011.
/s/ David A. Perlson
David A. Perlson

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CERTIFICATE OF SERVICE
I hereby certify that on February 13, 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.

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]
Counsel for Google Inc.,
Target Corporation,
IAC Search & Media, Inc., and
Gannet Co., Inc.

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/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]
11545612_1.DOC

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