I/P Engine, Inc. v. AOL, Inc. et al
Opposition to 87 MOTION to Compel Plaintiff to Provide Conception, Reduction-to-Practice, and Priority Date Information for the Patents-in-Suit filed by I/P Engine, Inc.. (Attachments: # 1 Exhibit 1, # 2 Exhibit 2, # 3 Exhibit 3, # 4 Exhibit 4, # 5 Exhibit 5)(Snow, W. Ryan)
UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF VIRGINIA
I/P ENGINE, INC.,
AOL, INC. et al.,
Civ. Action No. 2:11-cv-512
OPPOSITION TO GOOGLE’S MOTION TO COMPEL PLAINTIFF TO PROVIDE A
NARRATIVE DESCRIPTION INSTEAD OF RULE 33(d) RESPONSE REGARDING
PRIORITY DATE, CONCEPTION, AND REDUCTION-TO-PRACTICE
Google’s Motion to Compel is unnecessary and moot. Google filed its motion the
morning of February 13, 2012; however, on February 10, 2012, Google proposed, and I/P Engine
agreed, “that on Monday, February 13, I/P Engine and Google [will] exchange supplemental
interrogatory responses citing to specific Bates ranges under Rule 33(d).” Ex. 1. Consistent with
that agreement, the same day that Google filed its motion, I/P Engine served supplemental
responses to Google’s Interrogatory Nos. 1 and 9. Ex. 2. I/P Engine’s supplemental responses
identified a priority date for the patents-in-suit, and also identified pursuant to Rule 33(d)
specific documents that reflect plaintiff’s present knowledge regarding conception and reduction
to practice. I/P Engine’s supplemental responses are appropriate and complete under the rules
and case law. Google’s motion is not directed to these supplemental responses, and thus the
motion is moot.
Following service of Google’s motion, and of I/P Engine’s supplemental responses, the
parties have discussed their differences. I/P Engine has offered to state that the date range for
conception and reduction to practice is as reflected in the cited documents (Ex. 3), but Google
has not responded to this offer. Ex. 4, ¶ 9. Instead, Google has insisted on a narrative
interrogatory response instead of reliance upon Rule 33(d), as Google believes is required under
the Northern District of California’s local patent rules. Not only are those rules inapplicable in
this Court, but Google’s dispute is entirely theoretical, because Google has not asserted any prior
art in its invalidity contentions that falls within the date range of I/P Engine’s cited documents.
I/P Engine has Provided a Complete and Adequate Response to Google’s
Interrogatory No. 9
I/P Engine’s response that “each of the asserted claims of the patent-in-suit are entitled to
a priority date at least as early as the effective date of ‘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)” and citation of documents in accordance with Rule 33(d) is a sufficient
response as a matter of law. In Sprint Comm. Co. v. Big River Tel. Co., No. 08-2046, 2009 U.S.
Dist. Lexis 47238, *6-8 (D. Kan. June 4, 2009), that court held that a priority date interrogatory
response consisting of a date including “at least as early as” language and a Rule 33(d) response
was a complete answer. I/P Engine’s response is essentially identical to the response in the
Sprint case. Just as that response was held unambiguous and complete, so should I/P Engine’s. 1
A party may supplement an interrogatory response requesting priority date information, if
necessary, when further information becomes available based on its investigation. See LG
Display Co., Ltd. v. Au Optronics Corp., 265 F.R.D. 189 (D. Del. 2010) (holding that providing
an answer to an interrogatory regarding an invention date that “expressly left open the possibility
of . . . claiming an earlier invention date” and then supplementing the interrogatory response to
overcome prior art provided by opposing party was acceptable); Cross Med. Prods. v. Depuy
Acromed, Inc., No. 00-876, 2003 U.S. Dist. LEXIS 26720 (C.D. Cal. Jan. 7, 2003) (holding that
Google’s only argument to the contrary is that “[i]t is improper for Plaintiff to provide
such an ambiguous priority date.” Motion at 6. But Google’s own cited cases fail to support its
argument. In McKesson Info. Solutions LLC v. Epci Sys. Corp., 242 F.R.D. 689, 692 (N.D. Ga.
2007), plaintiff refused to provide any priority date and argued that such information is irrelevant
– unlike here, where I/P Engine identified a date, and cited documents. In In re Papst Licensing
GMBH & Co. KG Litig’n, 252 F.R.D. 7, 17 (D.D.C. 2008), plaintiff provided a conception date
range that predated, and was not fully supported by, the supporting evidence – not the case here.
Here, I/P Engine has identified a date and all relevant information regarding priority. Google’s
third case, Invacare Corp. v. Sunrise Med. Holdings, Inc., No. 04-1439, 2005 WL 1750271
(N.D. Ohio Jan. 21, 2005), is factually inapplicable. There, the cited documents contradicted the
language of “at least as early as” by suggesting a date later than the provided date. Id. at *3-4.
That is not the case here, both because the cited documents are consistent with the identified
date, and because Google filed its motion before reviewing the supplemental response and
documents cited pursuant to Rule 33(d).
To the extent that Google has discomfort with the phrase “at least as early as,” courts
have accepted such language as proper. See, e.g., Sprint Comm., 2009 U.S. Dist. Lexis 47238 at
*7-8 (upholding a response indicating that a conception occurred “at least as early as about
October 1993”); see also Monsanto Co. v. E.I. Du Pant De Nemours and Co., No. 09-686, 2011
U.S. Dist. Lexis 56900 (E.D. Mo. May 6, 2011) (holding that plaintiff is not required to provide
an absolutely definitive priority date in answering an interrogatory, as the plaintiff is entitled to
argue an alternative effective priority date to overcome later-identified prior art).
a party may supplement its answer to an interrogatory requesting an invention date when more
specific data is ascertained, even if supplementation comes after the close of discovery).
Google incorrectly asserts that I/P Engine is refusing to respond to Google’s interrogatory
until Google has made a prima facie case of invalidity. Not so. I/P Engine provided a complete
response to Google’s interrogatory. Of course, I/P Engine has the right to supplement its
responses; it is both permitted and common practice to provide updated priority dates throughout
the discovery process based on a party’s ongoing investigation. 2
I/P Engine’s Supplemental Response to Google’s Interrogatory No. 1 is
Complete and Adequate as a Matter of Law
I/P Engine’s supplemental response to Interrogatory No. 1 specifically identified twentythree documents pursuant to Rule 33(d). This response was provided pursuant to the parties’
February 10th agreement that they would “exchange supplemental interrogatory responses citing
to specific Bates ranges under Rule 33(d).” Ex. 1. Under both the agreement and the case law,
I/P Engine’s response is a complete and proper answer to an interrogatory requesting conception
and reduction-to-practice information. See Sprint Comm., 2009 U.S. Dist. Lexis 47238, at *6-8
Numerous courts have held that supplementing interrogatory responses regarding priority,
conception, or reduction to practice dates is acceptable and even required. See, e.g., Synventive
Molding Solutions, Inc. v. Husky Injection Molding Sys., 262 F.R.D. 365, 378-79 (D. Vt. 2009)
(holding that where, in response to an interrogatory requesting a conception date, documents
indicating a patent filing date as a minimal constructive date for conception is a sufficient answer
and that a party may supplement an interrogatory at a later time if and when they plan to rely on
an earlier priority date); see also Monsanto Co., 2011 U.S. Dist. Lexis 56900, at *14 (holding
that plaintiff is entitled to argue alternative effective priority dates to overcome prior art);
Ajinomoto Co. v. Int’l Trade Comm’n, 597 F.3d 1267, 1277 (Fed. Cir. 2010) (“A patentee may
seek to rely on an earlier priority date to overcome intervening prior art” and “may also argue in
the alternative for different priority dates at trial.”); Cross Med. Prods., 2003 U.S. Dist. LEXIS
26720, at *7-9 (holding that a party may supplement an answer to an interrogatory requesting an
invention date when more specific data is ascertained, even if supplementation comes after the
close of discovery); LG Display Co., Ltd., 265 F.R.D. at 197-98 (holding that providing an
answer to an interrogatory regarding an invention date that “expressly left open the possibility of
. . . claiming an earlier invention date” and then supplementing the interrogatory response to
overcome prior art provided by opposing party was acceptable). Indeed, Google acknowledges
(Motion at 9) that I/P Engine has a right of supplementation.
(noting that, pursuant to Rule 33(d), it is plaintiff’s prerogative to respond to a conception and
reduction to practice interrogatory by specifying documents).
The history of this response shows I/P Engine’s diligence. On December 7, 2011, I/P
Engine responded to Interrogatory No. 1 indicating that “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.” Ex. 5 at 5-6. Between December 21, 2011,
and February 1, 2012, four separate productions of relevant documents were made that related to
conception and reduction to practice. 3 See Ex. 4, ¶ 5. Pursuant to I/P Engine’s agreement to
Google’s February 10th proposal, on February 13th, I/P Engine supplemented its Rule 33(d)
response identifying twenty-three specific documents sourced from those various productions.
See Ex. 2 at 3-4. In so doing, I/P Engine has presented Google with I/P Engine’s currently
known, relevant evidence on conception and reduction to practice.
The documents cited pursuant to Rule 33(d) reflect I/P Engine’s current information
regarding conception and reduction to practice. Google is now in the same position with the
same documents as I/P Engine. Under the Federal Rules, I/P Engine has fully responded, and is
withholding nothing. 4
Google misrepresented the facts regarding one of those productions. In its Motion (at 9),
Google appears to accuse I/P Engine of not producing documents that are in its possession, in
particular those of one of the inventors Mr. Kosak. As I/P Engine has explained to Google, Mr.
Kosak did not possess any documents relevant to this litigation. Ex. 4, ¶ 3. And contrary to
Google’s assertions, the Lycos third party documents to which Google refers were produced to
defendants on February 1, 2012, almost two weeks before Google filed its Motion. Ex. 4, ¶ 4.
Google’s assertion that I/P Engine delayed its response based on Lycos’ production of
documents is inaccurate. Those documents were promptly made available to Google (Id.), and
the fact that Google did not review them in the two weeks preceding the filing of its motion is its
I/P Engine speculates that Google is concerned that I/P Engine could later assert a conception
date that might undermine Google’s invalidity contentions. Such a concern is both remote and
theoretical. The earliest possible date for conception based on the cited documents is not early
Google’s principal argument – that “[t]o date, Plaintiff has not supplemented its response
to this Interrogatory in any manner whatsoever” – is both misleading in view of the parties’
agreement reached before the motion was filed, and is mooted by I/P Engine’s supplementation
served on February 13, 2012.
Google’s fallback arguments are equally unpersuasive. First, Google suggests (Motion at
8) that I/P Engine’s identification of documents pursuant to Rule 33(d) is inadequate because I/P
Engine does not explain, via a narrative, the contents of the documents. That argument ignores
the fact that I/P Engine’s Rule 33(d) response satisfies its discovery obligations. I/P Engine’s
reliance upon Rule 33(d) is proper. If Google wishes to further explore the documents by
deposition, it is entitled to do so. See Sprint Comm., 2009 U.S. Dist. Lexis 47238, at *8.
Google tries to import the Northern District of California patent rules and case law to
support its argument (Motion at 8-9) that I/P Engine cannot assert Rule 33(d) when “both named
inventors are Plaintiff’s employees or consultants.” Google cites two Northern District of
California cases, neither of which stand for the general proposition. In Fresenius Med. Care
Holding Inc. v. Baxter Intern., Inc., 224 F.R.D. 644 (N.D. Cal. 2004), the court ordered Baxter to
update its response because the local patent rules obligated it to do so – not because Baxter had
access to the inventors and could interview them. There is no such patent rule in this Court. 5 In
Boston Sci. Corp. v. Micrus Corp., No. 04-4072, 2007 WL 174475 (N.D. Cal. Jan. 22, 2007), the
enough to affect any of the cited references disclosed in Google’s current invalidity contentions
(the latest being dated March 1997). Ex. 4, ¶ 7. Furthermore, as recently as two weeks ago,
Google indicated that it did not intend to assert any additional prior art. Id. at ¶ 8.
The local patent rule at issue in Baxter provided: “a party claiming patent infringement shall
serve on all parties . . . the priority date to which each asserted claim allegedly is entitled” and
“[a]ll documents evidencing the conception, reduction to practice, design, and development of
each claimed invention, which were created on or before the date of application for the patent in
suit or the priority date identified pursuant to Patent L.R. 3-1(f).” N.D. Cal. Patent L.R. 3-1(f)
court rejected an assertion identical to Google’s assertion here, and instead held that a definite
date need not be provided if plaintiff provides in good faith what it believes to be the
approximate dates of conception and reduction to practice. I/P Engine’s cited documents do just
that. Because I/P Engine appropriately has identified all information available to the parties
regarding priority date, as well as conception and reduction to practice, no further response is
I/P Engine’s interrogatory responses are sufficient and complete as a matter of law.
Dated: February 27, 2012
By: ________/s/ W. Ryan Snow_________
Donald C. Schultz (Virginia Bar No. 30531)
W. Ryan Snow (Virginia Bar No. 47423)
CRENSHAW, WARE & MARTIN PLC
150 West Main Street
Norfolk, VA 23510
Telephone: (757) 623-3000
Facsimile: (757) 623-5735
Jeffrey K. Sherwood (Virginia Bar No. 19222)
Frank C. Cimino, Jr.
Kenneth W. Brothers
Charles J. Monterio, Jr.
DICKSTEIN SHAPIRO LLP
1825 Eye Street, NW
Washington, DC 20006
Telephone: (202) 420-2200
Facsimile: (202) 420-2201
Counsel for Plaintiff I/P Engine, Inc.
CERTIFICATE OF SERVICE
I certify that on the 27th day of February 2012, I electronically filed the foregoing with
the Clerk of Court using the CM/ECF system, which will send electronic notification of such
filing to the following:
Stephen E. Noona
Kaufman & Canoles, P.C.
150 W Main St., Suite 2100
Norfolk, VA 23510
Quinn Emanuel Urquhart & Sullivan LLP
50 California Street, 22nd Floor
San Francisco, CA 94111
Robert L. Burns
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
Two Freedom Square
11955 Freedom Drive
Reston, VA 20190
Cortney S. Alexander
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
3500 SunTrust Plaza
303 Peachtree Street, NE
Atlanta, GA 94111
________/s/ W. Ryan Snow_________
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