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

Filing 96

Declaration re 95 Reply to Response to Motion of Margaret Kammerud in Support of Google's Reply in Support of Motion to Compel Plaintiff to Provide Conception, Reduction-to-Practice, and Priority Date Information for the Patents-in-Suit by Google Inc.. (Attachments: # 1 Exhibit L, # 2 Exhibit M, # 3 Exhibit N, # 4 Exhibit O, # 5 Exhibit P, # 6 Exhibit Q)(Noona, Stephen)

quinn emanuel

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January 5, 2012
VIA E-MAIL
Kenneth Brothers
[e-mail]
Re:

December 22, 2011 Meet and Confer Telephone Conference

Dear Ken:
I write to confirm our meet and confer telephone conference on December 22, 2011.
We have requested that I/P Engine provide an actual response to Request for Admission No. 3,
“Admit that you have no actual knowledge of whether GOOGLE was aware of the PATENTSIN-SUIT before the complaint in this action was filed,” rather than limiting its answer to “[o]n
information and belief.” In the phone call you made clear that I/P Engine refuses to provide a
response based on actual knowledge, despite Google’s request. You stated that it was
inappropriate to ask one party what is “in another’s head.” However, as we indicated on the
phone call, a RFA seeking a party's actual knowledge of an issue is proper and requires a
response detailing that actual knowledge.
With respect to I/P Engine's Rule 33(d) responses to certain of Google's interrogatories, you said
that you would be able to supplement these responses to provide specific Bates numbers as soon
as the next day. You refused to do so, however. Instead, even though you possess this
information, I/P Engine intends to withhold this information until the parties can mutually
exchange supplementation of separate, unrelated interrogatories. As we made clear on the call,
this is not proper. Thus, I/P Engine should supplement its response to provide this information to
the extent I/P Engine has it, and should continue throughout this case to supplement its
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interrogatory responses as required by FRCP 26(e).
You disagree with our position that Interrogatory No. 10, which requests that Plaintiff identify
ways it believes its invention improved on the prior art in a non-obvious way, requires a
narrative response. You stated that you could think of “a number of categories of documents”
that would be adequately responsive, but you declined to “preview” what these categories were,
beyond patent specifications and patent prosecution histories. We indicated these general
categories of documents would be insufficient to answer the interrogatory and invited you to
identify other categories of documents. You refused to do so.
Additionally, you stated that the employees who are listed on I/P Engine’s initial disclosures as
Innovate/Protect, Inc. employees also work and have the same titles at I/P Engine. We noted that
I/P Engine at the same time withheld Andrew Lang’s documents on the grounds that he is a third
party. You took the position that I/P Engine will not produce responsive, relevant documents in
an employee’s possession that date from outside that employee’s period of employment. I/P
Engine apparently only has three employees, Andrew Lang, Donald Kosak, and Alexander
Berger, and the company's only function appears to be litigating the patent-in-suit. Therefore, as
we noted during the call, I/P Engine is obligated to produce relevant, responsive documents in its
employees’ or counsel’s possession, and I/P Engine’s position that Mr. Lang’s relevant
documents are or were somehow not in I/P Engine’s possession is untenable; Google reserves all
rights.
We have asked you for supplemental infringement contentions in response to Interrogatory No.
7, now that I/P Engine possesses Google’s technical documents. You stated that you are
“agreeable in principle” to setting a target date for supplementation of contentions, but you do
not yet know when I/P Engine will amend its contentions and will provide a date by midJanuary. Given the short schedule in this case we ask for more guidance on Plaintiff's intended
timing of supplementation now.
You disagree with our position that Interrogatory No. 1, which requests the date of conception
and the date of reduction to practice of its subject matter for the patents-in-suit, requires a
substantive response and, at minimum, the identification of specific dates. You have not
provided a date for either the date of conception or the date of reduction to practice for either
patent. Rather, you stated that I/P Engine refuses to provide any conception date or a reduction
to practice date in response to Interrogatory No. 1 until you have reviewed the Lycos production.
As we stated, if I/P Engine has information on a date now it needs to provide it now. That other
information may come available later that would make supplementation appropriate does not
excuse I/P Engine from providing the information it has now. Indeed, you admitted that Mr.
Lang already has documents relevant to conception and reduction to practice. Google reserves
all rights.
With respect to a priority date, I/P Engine responded to Interrogatory No. 9 that the claims of the
patent-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.” You clarified on the call that I/P Engine contends that the
priority date is December 3, 1998, but that I/P Engine has not decided if it will rely on earlier
patent applications to pursue an earlier priority date despite the fact that the applications on

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which it would rely already are in I/P Engine’s possession and that I/P Engine cannot say when it
will decide whether or not to rely on prior applications. As we indicated on the phone call and in
previous correspondence, we are entitled to a complete and final answer to our interrogatory.
You agreed to tell us by the middle of last week whether I/P Engine will be supplementing its
response to provide a firm priority date, but we have not yet heard from you. Accordingly,
Google will proceed with a motion to compel.
You stated during the meet and confer that the categories of document from prior AdWords
litigations that you demanded in your December 16 and December 22 emails were a narrowing
of earlier requests and threatened to move to compel production of those broad categories if we
did not produce them. However, your emails included documents well beyond the scope of
Plaintiff’s Request for Production No. 50. That request included only “expert reports,
contentions, claim construction-related documents, discovery responses, deposition transcripts,
or trial transcripts.” As such, our December 21 proposal to produce deposition transcripts from
current and former Google employees from AdWords litigations regarding aspects of the
technology similar to those accused in this case, non-infringement expert reports from those
cases, and Google-specific portions of the Bright Response trial transcript is reasonable in light
of the request for production. Further, it is premature to threaten to move to compel when we
already have agreed to discuss the production of specific additional documents from prior
litigations that Plaintiff may identify as relevant during the course of this case.
You have also asked whether AdWords is Google's only query-based search advertising system.
We agreed to check with Google to confirm whether this is the case. You have agreed that, if so,
discovery requests seeking information about "Relevance Score" can be modified to seek
information about "Quality Score." You also indicated that you may be willing to drop Google
Search from the litigation if Google confirms that Google Search does not use click-through rates
to rank/return search results.
During the call, we also discussed I/P Engine's proposal to limit discovery with respect to IAC,
Gannett, and Target to damages, if we will stipulate that there are no relevant non-infringement
differences between these defendants' implementation of AdWords and Google's own
implementation. We indicated that while we are not aware of relevant differences with respect to
I/P Engine's current, incomplete infringement contentions, we are not prepared to enter into a
stipulation until I/P Engine provides more detailed contentions, which may reveal relevant
differences. In response to the question in Charles Monterio's December 23 email, we do not
represent AOL and cannot speak as to AOL's implementation of AdWords.

Sincerely,

David A. Perlson
DAP:JG
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