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

Filing 895

Declaration re 894 Reply to Response to Motion, 893 Reply to Motion, 892 Reply to Motion, (Declaration Of Howard Chen In Support Of Defendants Reply Briefs In Support Of Defendants Renewed Motions For Judgment As A Matter Of Law) by AOL Inc., Gannett Company, Inc., Google Inc., IAC Search & Media, Inc., Target Corporation. (Attachments: # 1 Exhibit 1, # 2 Exhibit 2)(Noona, Stephen)

EXHIBIT 2

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF VIRGINIA
NORFOLK DIVISION
I/P ENGINE, INC.
Plaintiff,

Civil Action No. 2:11-cv-512

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

ORDER ON FINAL PRETRIAL CONFERENCE
Plaintiff I/P Engine, Inc. (“Plaintiff”) and Defendants AOL Inc., Google Inc., IAC
Search & Media, Inc., Gannett Co., Inc., and Target Corporation (collectively, “Defendants”)
submit the following proposed final pretrial order pursuant to the Court’s Order of February 15,
2012, the Federal Rules of Civil Procedure, and the Local Rules of this Court and the Case
Management Orders, previously entered herein. The parties having stipulated as to various
matters identified herein and having identified exhibits, witnesses, factual contentions and triable
issues, it is hereby ORDERED as follows:
I.

STIPULATION OF UNDISPUTED FACTS
The parties agree that the following facts are undisputed for purposes of this litigation:
1.

U.S. Patent No. 6,314,420 (“the ‘420 patent”) is entitled “Collaborative/Adaptive
Search Engine” and issued on November 6, 2001.

2.

The application that issued as the ‘420 patent was filed on December 3, 1998.

3.

Claims 10, 14, 15, 25, 27, and 28 of the ‘420 patent are asserted.

4.

Claims 1, 5, 6, 21, 22, 26, 28 and 38 of the ‘664 patent are asserted.

5.

U.S. Patent No. 6,775,664 (“the ‘664 patent”) is entitled “Information Filter
System and Method for Integrated Content-Based and Collaborative/Adaptive
Feedback Queries” and issued on August 10, 2004.

10.

Defendants reserve the right to include additional contentions and disputed issues

of fact and law based on (i) other motions or procedural or substantive issues that may arise
between the date of this document and (a) the pre-trial conference and (b) trial.
V.

TRIABLE ISSUES
A.

The Triable Issues As Contended By Plaintiff
1. Whether Defendants infringe directly and/or indirectly claims 10, 14, 15, 25, 27

and 28 of the ‘420 patent by making, using, selling or offering for sale in the United States
Google’s AdWords, AdSense for Search, and AdSense for Mobile Search, and AOL Search
Marketplace.
2.

Whether Defendants’ infringement of the ‘420 patent has been and continues to

be willful at least since the filing of the present litigation.
3. Whether I/P Engine has suffered and will continue to suffer damages in an
amount to be determined at trial as a direct and proximate result of Defendants’ infringement
of the ‘420 patent.
4. Whether Defendants’ infringe directly and/or indirectly claims 1, 5, 6, 21, 22, 26,
28 and 38 of the ‘664 patent by making, using, selling or offering for sale in the United Sates,
Google’s AdWords, AdSense for Search, and AdSense for Mobile Search, and AOL Search
Marketplace.
5. Whether Defendants’ infringement of the ‘664 patent has been and continues to
be willful at least since the filing of the present litigation.
6.

Whether I/P Engine has suffered and will continue to suffer damages in an

amount to be determined at trial as a direct and proximate result of Defendants’ infringement
of the ‘664 patent.

Contains Confidential and Confidential Outside
Counsel Only Information Pursuant to the Protective Order

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7.

Whether this is an exceptional case such that I/P Engine is entitled to receive

enhanced damages and/or attorneys’ fees.
8.

Whether claims 10, 14, 15, 25, 27 and 28 of the ‘420 patent and claims 1, 5, 6,

21, 22, 26, 28 and 38 of the ‘664 patent are anticipated by, or obvious in light of, the prior art
under 35 U.S.C. §§ 102 and 103.
9. Defendants are requesting a separate evidentiary hearing with the Court on the
equitable issue of laches prior to trial. I/P Engine believes that any such hearing should
occur after trial. The parties already extensively briefed this issue through summary
judgment. The Court denied Defendants’ summary judgment motion on this issue.
B.

The Triable Issues As Contended By Defendants

1.

Whether Defendants infringe any of the asserted claims of the '420 patent, listed

below:
a.
b.

Claim 14

c.

Claim 15

d.

Claim 25

e.

Claim 27

f.
2.

Claim 10

Claim 28

Whether Defendants infringe any of the asserted claims of the '664 patent, listed

below:
a.

Claim 1

b.

Claim 5

c.

Claim 6

d.

Claim 21

Contains Confidential and Confidential Outside
Counsel Only Information Pursuant to the Protective Order

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