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

Filing 91

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)

Exhibit 4 

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.
)
__________________________________________)
DECLARATION OF CHARLES J. MONTERIO, JR. IN SUPPORT OF
I/P ENGINE’S 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
I, Charles J. Monterio, Jr., declare as follows:
1.

I am an attorney with the law firm of Dickstein Shapiro LLP, 1825 Eye Street

N.W., Washington, DC 20006 and am counsel for Plaintiff I/P Engine, Inc. (“I/P Engine”) in the
above-captioned case. This declaration is submitted in support of I/P Engine’s 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, filed herewith.
2.

On behalf of I/P Engine, I coordinated many of the document collections in the

above-captioned case – one of which involved Mr. Donald Kosak.
3.

I determined that Mr. Kosak, a technical consultant to I/P Engine and one of the

inventors of the patents-in-suit, did not possess any documents relevant to this litigation. I have
verbally and through letters explained such to Google’s counsel.
4.

The documents referenced by Google, Inc. in its Motion to Compel pertaining to

Mr. Kosak are third party Lycos documents – not documents that were in the possession of Mr.

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Kosak. Those documents were produced to defendants on February 1, 2012 – almost two weeks
before Google filed its Motion to Compel.
5.

Additionally, I am aware of document productions, including documents related

to conception and reduction to practice, on December 21, 2011, December 23, 2011, January 19,
2012 and February 1, 2012
6.

I have also reviewed Google’s invalidity contentions, dated January 24, 2012, and

am familiar with the documents cited by I/P Engine in response to Google’s Interrogatory No. 1.
7.

The earliest possible date for conception based on the cited documents is not early

enough to affect any of the cited references disclosed in Google’s current invalidity contentions
(the latest dated reference being March 1997).
8.

As recently as two weeks ago, Google indicated verbally during a meet and confer

that it did not intend at that time to assert any additional prior art.
9.

Google has not responded to Mr. Brothers’ email of February 24, 2012, or his

offers during his telephone conversations with Mr. Noona between February 22-24, 2012,
regarding I/P Engine’s offer to state that the date range for conception and reduction to practice
is as reflected in the cited documents.
Dated: February 27, 2012

By: ___/s/ Charles J. Monterio, Jr. ______
Charles J. Monterio Jr.
DICKSTEIN SHAPIRO LLP
1825 Eye Street, NW
Washington, DC 20006
Telephone: [phone]
Facsimile: [phone]
Counsel for Plaintiff I/P Engine, Inc.

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