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

Filing 89

Declaration re 88 Memorandum in Support of Margaret Kammerud in Support of Google's Motion to Compel Plaintiff to Provide Conception, Reduction-to-Practice, and Priority Date Infomation for the Patents-in-Suit by Google, Inc.. (Attachments: # 1 Exhibit A, # 2 Exhibit B, # 3 Exhibit C, # 4 Exhibit D, # 5 Exhibit E, # 6 Exhibit F, # 7 Exhibit G, # 8 Exhibit H, # 9 Exhibit I, # 10 Exhibit J, # 11 Exhibit K)(Noona, Stephen)

EXHIBIT B

quinn emanuel trial lawyers | san francisco
50 California Street, 22nd Floor, San Francisco, California 94111-4788 | TEL: [phone] FAX: [phone]

WRITER'S DIRECT DIAL NO.
[phone]
WRITER'S INTERNET ADDRESS
[e-mail]

December 13, 2011

Ken Brothers
Dickstein Shapiro LLP
1825 Eye Street NW
Washington, DC 20006
Re:

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

Dear Ken:
I am writing in regards to I/P Engine’s responses to Google’s First Set of Requests for
Admission and First Set of Interrogatories. The fact that a response is not mentioned below does
not mean that the response is acceptable. Rather, we are trying to streamline discovery by
raising certain issues first.
I.

Insufficiencies in Plaintiff’s Response to Request for Admission No. 3

Request for Admission No. 3 states, “Admit that you have no actual knowledge of whether
GOOGLE was aware of the PATENTS-IN-SUIT before the complaint in this action was filed.”
Plaintiff responded based “[o]n information and belief.” In limiting its response to information
and belief, Plaintiff’s wholly ignores Google’s demand for actual knowledge of any awareness of
the patents. Plaintiff must provide a response based on actual knowledge.
Also in its response to Request for Admission No. 3, Plaintiff included information concerning
AOL’s possible knowledge of the ‘420 patent. Please explain whether and, if so, how AOL’s
possible knowledge of the patent is in any way related to Plaintiff’s allegation that Google had
pre-suit knowledge of the ‘420 patent.
quinn emanuel urquhart & sullivan, llp
LOS ANGELES | 865 South Figueroa Street, 10th Floor, Los Angeles, California 90017-2543 | TEL [phone] FAX [phone]
NEW YORK | 51 Madison Avenue, 22nd Floor, New York, New York 10010-1601 | TEL [phone] FAX [phone]
SILICON VALLEY | 555 Twin Dolphin Drive, 5th Floor, Redwood Shores, California 94065-2139 | TEL [phone] FAX [phone]
CHICAGO | 500 W. Madison Street, Suite 2450, Chicago, Illinois 60661-2510 | TEL [phone] FAX [phone]
LONDON | 16 Old Bailey, London EC4M 7EG, United Kingdom | TEL [phone] FAX [phone]
TOKYO | NBF Hibiya Bldg., 25F, 1-1-7, Uchisaiwai-cho, Chiyoda-ku, Tokyo 100-0011, Japan | TEL [phone] FAX [phone]
MANNHEIM | Erzbergerstraße 5, 68165 Mannheim, Germany | TEL [phone] FAX [phone]

II.

Responding to Interrogatories By Producing Documents

For Interrogatory Nos. 1, 2, 6, 10, and 11, Plaintiff responded that under Rule 33(d), it “will
produce documents from which information responsive to this Interrogatory may be derived or
ascertained.”
Initially, for Interrogatory Nos. 1 and 10, relying on documents is not a sufficient response. With
respect to Interrogatory No. 1, we need Plaintiff to identify its claimed conception and/or
reduction to practice dates for the various claims at issue, not just the documents it may rely on
for that. Plaintiff must supplement its response to provide what the Interrogatory requests – the
date of conception and a date of reduction to practice of each claim at issue, among other facts.
With respect to Interrogatory No. 10, we do not believe that documents alone would identify the
ways that Plaintiff believes its invention improved on the prior art in a non-obvious and
unpredictable way. Rather, this Interrogatory calls for a narrative response.
Moreover, to the extent that Plaintiff intends on relying on produced documents to respond to
Interrogatory Nos. 1, 2 , 6, 10, and 11, it must identify by Bates number those documents that are
responsive. Based on your responses and an initial review of Plaintiff’s productions to date,
however, it does not appear that Plaintiff has produced documents containing information
responsive to these Interrogatories. To the extent that Plaintiff is intending on relying on
documents yet to be produced that Plaintiff is withholding merely because there were obtained
from third parties. we believe this is not in compliance with the Federal Rules. Google expects
production of all documents in Plaintiff's possession no matter how obtained.
III.

Additional Issues with Plaintiff’s Interrogatory Responses

In response to Interrogatory No. 7, Plaintiff incorporated its Preliminary Disclosures of Asserted
Claims and Pre-Discovery Infringement Contentions as to Google. Since service of Plaintiff’s
Preliminary Disclosures, Google has produced technical documents for each of its accused
systems. Please let us know when Google can expect supplemented infringement contentions
based on its technical production.
In response to Interrogatory No. 9, Plaintiff failed to give a definite priority date for each claim
of each of the Patents-in-Suit or to identify portions of the specification in any earlier application
that support the priority date of either patent. Plaintiff must provide its asserted priority date for
each claim of each Patent-in-Suit and identify supporting portions of any earlier applications.

2

Please provide responses to each of these concerns no later than Thursday.
Very truly yours,

Margaret P. Kammerud

3