13-07-01 Skyhook Motion to Compel

7/28/2019 13-07-01 Skyhook Motion to Compel

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IN THE UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF MASSACHUSETTS

SKYHOOK WIRELESS, INC.,

Plaintiff,

v.

GOOGLE INC.,

Defendant.

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Civil Action No. 1:10-cv-11571-RWZ

and

Civil Action No. 1:13-cv-10153-RWZ

SKYHOOK WIRELESS, INC.S MEMORANDUM OF LAW IN SUPPORT OF ITS

MOTION TO COMPEL GOOGLE INC. TO PRODUCE MR. PATRICK BRADY FOR A

DEPOSITION AND TO PRODUCE CERTAIN DOCUMENTS RESPONSIVE TO

SKYHOOKS DOCUMENT REQUESTS

Case 1:10-cv-11571-RWZ Document 195 Filed 07/01/13 Page 1 of 22


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TABLE OF CONTENTS

I. INTRODUCTION ................................................................................................................... 1II. GOOGLES ATTEMPT TO BLOCK THE DEPOSITION OF MR BRADY, WHO

GOOGLE DESIGNATED AS ONE OF THE TWO MOSTKNOWLEDGEABLE PEOPLE ABOUT MARKETING OF THE ACCUSED

PRODUCTS, IS IMPROPER ............................................................................................ 3III. GOOGLE MUST PRODUCE MR. SERGEY BRINS DOCUMENTS

RESPONSIVE TO THE NARROW, TARGETED SEARCH SKYHOOK HASREQUESTED .................................................................................................................... 5A. SKYHOOK REQUESTED A FOCUSED ELECTRONIC SEARCH OF MR.

BRINS FILES FOR HIGHLY RELEVANT SUBJECT MATTER .................... 5B. GOOGLES UNSUPPORTED RELEVANCE ASSERTIONS ARE

IMPROPER ATTEMPTS TO UNILATERALLY PREJUDGE THEMERITS OF SKYHOOKS CASE ..................................................................... 10

IV. GOOGLE MUST PRODUCE ALL DEPOSITION TRANSCRIPTS ANDDISCOVERY RESPONSES FROM TRACBEAM LITIGATION ................................ 12A. FACTUAL BACKGROUND .................................................................................. 12B. GOOGLES BURDEN AND RELEVANCE ARGUMENTS FAIL IN

LIGHT OF ITS OWN CONDUCT AND ADMISSIONS .................................. 14V. GOOGLE MUST PRODUCE ITS AGREEMENTS RELATED TO ACCUSED

PRODUCTS AND NEGOTIATIONS RELATING TO THEM OR PROVE

THAT ITS PRODUCTION IS COMPLETE .................................................................. 15



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TABLE OF AUTHORITES

CasesIn re Google Litig.

2011 U.S. Dist. LEXIS 125732 (N.D. Cal. Oct. 31, 2011) ....................................................... 14

TracBeam v. AT&T et al.

Case No. 6:11-CV-96, Dkt. No. 352 (E.D Tex. Jan. 23, 2013 Mem. Opinion and Order) ...... 13

Trackbeam v. AT&T et al.

Case No. 6:11-cv-96, Dkt No. 57 (TracBeams 1st Supp. Amd. Complaint) .......................... 15

Trackbeam v. AT&T et al.

Case No. 6:11-cv-96, Dkt. No. 353 (Order to Mot. to Sever) .................................................. 15

Vasudevan Software, Inc. v. Microstrategy Inc.

No. 11-cv-06637-RS-PSG, 2012 U.S. Dist. LEXIS 163654 (N.D. Cal. Nov. 15, 2012) ......... 12



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I. INTRODUCTIONGoogles representations in its latest submission to this Court that it intend[s] to keep

this 11-patent case moving forward expeditiously (Dkt No. 189 at 1, 2) ring hollow. Googles

actions speak louder and clearer than its unsupported assertions: Google has sought on multiple

fronts to slow down Skyhooks case in nearly every possible way. A few particularly important

examples from Skyhooks pending motions to compel are the following: (a) Googles continued

refusal to produce the full Wi-Fi Location Database, one of the key accused products in this case

(see Dkt. No. 126 at 3); (b) Googles refusal to provide interrogatory responses relating to the

very identification of Google Location accused products, including their models and versions;

and licensing and monetary and other benefits Google receives from its accused products (see

Dkt. No. 167 at 15-18); and (c) any testimony relating to the parties communications about, and

Googles internal valuations of, Skyhooks technology that are relevant to Skyhooks willful

infringement and damages allegations (see Dkt. No. 173 at 13-16). Skyhooks three pending

motions to compel and the instant motion reflect a lengthy list of instances where Googles

intransigence has wasted significant resourcesboth of the parties and this Courtand wasted

precious timeboth of the parties and this Courtthat should instead be devoted to the merits

of this case.

As a result of Googles continuing efforts to deny Skyhook appropriate and timely

discoveryin a case now pending for over two and a half yearsSkyhook is forced reluctantly

to bring yet another motion to compel. This motion concerns several additional aspects in which

Googles discovery responses are unacceptable. First, nearly a month after Skyhook served

seven deposition notices for Googles employees, Google finally just last weekunder a threat

of a motion to compelprovided availability for only three of those witnesses. But it is refusing

to offer one of themMr. Patrick Bradyfor deposition at all. Mr. Brady is one of only two



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witnesses Google has identified as knowledgeable about sales and marketing of the accused

products, and the only person Google has identified as knowledgeable about Android

relationships, the relationships with its original equipment manufacturing partners to whom

Google distributes and who use Googles accused Google Location products and services. Mr.

Bradys deposition in Googles state case, the one that Google wishes to rely on, cannot fulfill

Googles obligation to provide discovery on the important issues of sales, marketing and

distribution of the accused products, as well as acts Google performs to induce or contribute to

its Android partners direct infringement. The state case related to Skyhooks state law tortious

interference claims. The present case is about Skyhooks patent infringement claims, which

raise different issues than those at play in the state case, including issues relating to indirect

infringement and to damages, such as lost profits and reasonable royalty, where Mr. Bradys

testimony is expected to be highly relevant. There was no agreement that the state case

depositions would preclude depositions of the same witnesses in this case, and indeed, Google

has noticed the depositions of several Skyhook witnesses that it deposed in the state case (i.e.,

Messrs. Ted Morgan, George Rice, Michael Shean and Nick Brachet).

Second, Google continues to refuse to comply with its document production obligations.

Skyhooks two previously filed motions concern numerous deficiencies in Googles production,

and this motion addresses additional such deficiencies. First, Google is refusing to produce Mr.

Sergey Brins documents, pursuant to a narrow, targeted search Skyhook has requested, because

Google unilaterally believes they are irrelevant but refuses to show Skyhook any of those

documents. Google has failed to show any burden, has failed to show Mr. Brins documents

would be duplicative of its prior production, and has failed to show that those documents would

be less likely than not to lead to admissible evidence. Second, Google is also refusing to produce



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discovery responses and depositions from another patent infringement case also involving

Googles location products and services, which Google has representedto a different courtis

relevant to this case. Finally, by its own admission, Google has produced less than two hundred

pages evidencing its negotiations with third parties regarding Google Location products for

nearly a half-dozen years covered by Skyhooks requests and appears not to have produced any

direct communications with any of these third parties. Pursuant to Skyhooks document

requests, Google must complete its production of agreements relating to Google Location

including its negotiations of those agreements.

Therefore, Skyhook respectfully requests the Courts assistance in compelling Google to

produce Mr. Patrick Brady for his deposition and to produce the documents Skyhook seeks.

II. GOOGLES ATTEMPT TO BLOCK THE DEPOSITION OF MR BRADY, WHOGOOGLE DESIGNATED AS ONE OF THE TWO MOST KNOWLEDGEABLE

PEOPLE ABOUT MARKETING OF THE ACCUSED PRODUCTS, IS

IMPROPER

On May 23, 2013, Skyhook noticed a deposition of Mr. Patrick Brady, a Google

employee identified by Google in its initial disclosures as knowledgeable about Google's

Android Platform. Mr. Brady is also one of only eighteen Google employees from whom

Google produced files and emails in this litigation, and is also the only person on Googles initial

disclosures identified as knowledgeable about relationships with Android Partners. Moreover,

Mr. Brady is one of only two Google employees Google identified as knowledgeable about

sales and marketing in the United States of Google Location, the accused instrumentality. Ex.

1 (Jan. 6, 2011 Googles Resp. to Interrog. No. 1) at 6.

Nearly one month after Skyhooks notice issued, Google for the first time refused to offer

Mr. Brady for a deposition, arguing that his corporate and individual depositions in Skyhooks

state case suffice for this case as well. Ex. 2 (June 18, 2013 T. Lundin Email) at 2. Skyhook



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promptly explained that the infringement, willfulness, and the damages issues in the patent case

are specific to this case and that all of Mr. Bradys custodian files and the bulk of federal-case

production occurred after Mr. Brady was deposed in the state case. Ex. 3 (June 19, 2013 A.

Hadzimehmedovic Email) at 5. Google, however, persists in its refusal to offer Mr. Brady for

his deposition. Id. (June 24, 2013 S. Dutta Email) at 2.

Googles refusal to produce Mr. Brady for deposition in reliance on his deposition

testimony in the state case has no merit. First, the state case involved Skyhooks state law claims

that Google, which controls Android, interfered with Skyhooks contracts with Samsung and

then-independent Motorola concerning its location-positioning software.

That case did not

involve the patent infringement or damages issues, such as lost profits and reasonable royalty.

For example, the state case did not involve issues relating to indirect infringement, such as

Googles inducement or acts contributing to patent infringement by its Android partners. Given

Mr. Bradys involvement in relationships with Googles Android partners and his knowledge

regarding sales and marketing of the accused products, damages and indirect infringement issues

are areas where Mr. Bradys testimony is expected to be highly relevant. Further, it is not even

clear that the attorneys representing Skyhook at the time could have affirmatively sought

information relevant to this case through Mr. Bradys state-court testimony, given that the

Protective Order in this case specifically provides that Protected Material disclosed or produced

only in this Federal Action is not deemed disclosed or produced in the State Action. Section 7.1

of the Protective Order.

Second, Google has produced documents clearly relevant to Mr. Bradys deposition only

after his state court corporate and individual depositions. Mr. Brady is one of only two

individuals that Google has willingly identified in its interrogatory responses as knowledgeable



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about sales and marketing of the accused products, and is the only one Google has identified as

involved in Android relationships. Google named him a custodian in the federal litigation and

produced all of his documents in the federal casea total of over 6,600 documents from his

filesafterMr. Bradys state depositions were completed. A. Hadzimehmedovic Aff. 2.

Finally, Google has also refused to provide complete written discovery responses or

document production that would allow Skyhook to streamline Mr. Bradys deposition. Google

only recently produced the first financial spreadsheets relating to the revenue received from the

accused products or from their advertising, and it has admitted that it has not yet completed its

financial and licensing productions. Google also continues to refuse to produce a complete

supplemental interrogatory response that would include information about licenses, sales, and

distribution to its Android partners of the Google Location accused products and products that

use the accused products location estimates to generate significant advertising revenue for

Google. Dkt. No. 182 (June 14, 2013 Googles Opp. to Skyhooks Mot. to Compel) at 13.

Complete written interrogatory responses and document production from Google would allow

Skyhook to further focus Mr. Bradys deposition, but Google is unwilling to cooperate.

Skyhook respectfully requests that the Court compel Google to provide Mr. Brady for a

deposition within one week of the Courts order compelling his deposition.

III. GOOGLE MUST PRODUCE MR. SERGEY BRINS DOCUMENTSRESPONSIVE TO THE NARROW, TARGETED SEARCH SKYHOOK HAS

REQUESTED

A. SKYHOOK REQUESTED A FOCUSED ELECTRONIC SEARCH OF MR.BRINS FILES FOR HIGHLY RELEVANT SUBJECT MATTER

In February 2013, Skyhook noticed a deposition of Mr. Sergey Brin, one of Googles co-

founders, based on its belief that he would have information relevant to Skyhooks case, in

particular in the areas of willful infringement and damages. Ex. 4 (Feb. 6, 2013 A.



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Hadzimehmedovic Email) at 1. Skyhook also initially requested Mr. Brins documents based on

its general document requests that covered subject areas for which Skyhook believed Mr. Brin

would have responsive documents. Id. Google refused to produce any documents from Mr.

Brins possession or to offer him for a deposition, threatening sanctions. Ex. 5 (Feb. 25, 2013 W.

Abrams Email) at 2. Although Skyhook asked repeatedly that Google provide Mr. Brins

declaration confirming that he has not participated in the activities Skyhook has outlined as

relevant to its case and does not have any firsthand knowledge in these areas, Google refused to

do so. Id. at 1 (Mar. 6, 2013 A. Hadzimehmedovic Email); id. at 3 (Feb. 19, 2013 A.

Hadzimehmedovic Email). Google merely asserted that Mr. Brin did not have relevant

knowledge.

Skyhook agreed to postpone Mr. Brins deposition until it had an opportunity to take

further discovery, including reviewing documents from his production. Skyhook then served a

document request to allow it to test Googles assertion regarding Mr. Brins knowledge and

involvement in relevant subject matter; and to streamline Googles search for relevant documents,

Skyhook asked Google to perform an electronic search of Mr. Brins files pursuant to Googles

own search terms applied to other Google employees and a set of additional targeted search

terms. Ex. 6 (Googles Resps. to Skyhooks Third Set of RFPs, RFP. No. 316) at 130-131.

Google again refused. Id. at 131. In the meet-and-confer process, Skyhook further focused and

significantly narrowed its request by targeting areas of most relevance to Skyhooks case and

thus arrived at the six search strings that form the basis of its current motion:

i Skyhookii (Ted or Edward) w/3 Morganiii (Mike or Michael) w/3 Sheaniv (MacWorld or Mac World) and (Apple or Jobs or location or driv* or

beacons or triangulat*)



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v Location-based services or LBS or GLSvi (Location or Wi-Fi or WiFi or Wi?Fi or wireless or WLAN) and (advert* or

revenue or value).

Ex. 7 (June 3, 2013 A. Hadzimehmedovic Email re: ESI and Mr. Brins Documents) at 3.

Skyhook chose these six search strings because it has reason to believe that Mr. Brin has

specific information in his possession, custody and/or control that relate to issues in this case.

Merely as an example, regarding the Macworld search string Skyhook has requested, Skyhook

has told Google repeatedly that it has a reasonable belief that Mr. Brin has unique knowledge

about the Macworld January 2008 event relevant to Skyhooks case. In particular, at the

Macworld 2008 event, Apples Steve Jobs not only revealed that Apple was using Skyhooks

Wi-Fi location technology in maps for its then-nascent iPhone, but described it with admiration:

Lets take maps. There is no GPS inside the iPhone. We got this great new user

interface, but how do we actually arrive at the location? Well, were workingwith two companies to do that, Google, and a company called Skyhook Wireless.

Let me start with Skyhook. What they have done is theyve driven the US andCanada in little cars with antennas on them and GPS receivers in them, and

theyve mapped WiFi hot spots. They are now doing Europe and starting in Asia,and they got 23 million WiFi hot spots in their database, and so, when we go to

find a location, it turns out you pick up beacons from these hot spots, even if youare not connected to them, and then you pick up the beacons, we triangulate the

beacons, look in their database, and it tells us where you are. Isnt that cool? Itsreally cool.

Excerpt from Steve Jobss Macworld 2008 Presentation that can be found at

http://allaboutstevejobs.com/movies/stevejobskeynotes.php; also produced at

SKYFED5_000187924 (MP4 video)]. This screen accompanied Mr. Jobss presentation about

Skyhook:



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Mr. Jobs then also mentioned that Apple was also using Googles cell triangulation

technique:

And Google is doing basically the same thing with triangulating cell tower

information off the cellular network, and were using both of them, and it works

pretty doggone well. So that is how we find location on the iPhone.

Id. Skyhook has told Google that it has a reasonable belief Mr. Brin had discussions with Apple

representatives about Apples announcement regarding Skyhooks location technology and

Google's displeasure with it. Ex. 5 (March 6, 2013 A. Hadzimehmedovic Email). Having

apparently disparaged Skyhooks technology to Apple, Google proceeded to then launch the

same Wi-Fi based location technology by infringing Skyhooks patents. Thus, Mr. Brins

statements and documents may be relevant to Googles willful infringement because they would

show Googles awareness of Skyhooks technology at the highest echelons of the company. Mr.

Brins statements and actions may also be relevant to nonobviousness of Skyhooks patents if in

fact Mr. Brin disparaged the same methodology that Google soon after employed and monetized.



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In any event, these issues should be left for laterwhen and if Skyhook moves to compel Mr.

Brins deposition. For the moment, Skyhook is merely seeking Mr. Brins documents relevant to

this event and his participation in discussions about the value and inventiveness of Skyhooks

technology.

As to the other proposed search strings, Ted Morgan and Mike Shean are two of

Skyhooks founders and they have also both been active in Skyhooks negotiations with Google

and with Apple. Finally, by means of the last two search strings V and VI, Skyhook is seeking

documents from Mr. Brins possession that link him to the development of the accused Google

Location products, the approaches Google has employed to monetize the use of accused products,

and the value Google places on location data, which is data obtained from the mobile devices by

means relating to Googles accused location services. As Skyhook told Google, based on

Skyhooks review of Googles production, for example, Googles Location-Based Services

meeting notes reveal that both Mr. Brin and Mr. Page, the other Google founder, received

briefings about the development of Google's Location-Based Services, and that they participated

in product reviews and sales readiness evaluations. Ex. 5 at 1. Further, among those briefings,

Mr. Brin appears to have received briefings about Google's effort to place Googles location

services in the iPhone (instead of Skyhook or other third parties) so that Google could collect the

users Wi-Fi information. Id. Therefore, it is far more likely than not that Mr. Brin has

documents about the development of the accused products and the strategic value of those

services to Google, which are not only responsive to Skyhooks requested searches but highly

relevant to Skyhooks case and more persuasive by their virtue of being the files from a person at

the helm of the company.



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Google alleges that it has performed an in-house search of Mr. Brins files for the terms

Skyhook, Ted Morgan and MacWorld, the first being Skyhooks requested term I and the other

two being similar to Skyhooks requests II and IV. Ex. 3 (June 24, 2013 S. Dutta Email) at 1. In

a previous email, Google had asserted that Google had searched for a different set of terms:

Skyhook, Morgan, Shean and MacWorld. Ex. 2 (June 18, 2013 T. Lundin Email) at 4.

Whatever the correct scope of Googles actual search, Google has refused to search Mr. Brins

files in any form for strings V and VI, both of which relate to the accused products and services

and the ways in which Google obtains revenue related to those accused products and services.

Google has also refused to explain its refusal to even perform those searches. Moreover, in an

effort to make sure that Skyhooks request was not at all burdensome, Skyhook asked how many

hits each of Skyhooks requested search strings returned, but Google refused to tell Skyhook.

Ex. 3 (June 19, 2013 A. Hadzimehmedovic Email) at 5. And although Google has repeatedly

admitted that its searches returned responsive information, Google asserted that its own in-house

persons determined that these responsive documents were not relevant. Id. (June 24, 2013 S.

Dutta Email) at 1. Google refused to produce any of these responsive documents and threatened

sanctions again. Id. This refusal improperly blocks Skyhooks attempt to review Mr. Brins

documents to confirm his relevance to its case before moving forward with his deposition.

B. GOOGLES UNSUPPORTED RELEVANCE ASSERTIONS AREIMPROPER ATTEMPTS TO UNILATERALLY PREJUDGE THE

MERITS OF SKYHOOKS CASE

Googles unilateral assertions that Mr. Brins documents which hit on Skyhooks

search termsdocuments which only its in-house persons have seenare irrelevant to

Skyhooks case can provide no basis to withhold them. Google failed to support those assertions

with any evidence or any reason why its unilateral relevance determinations should be the metric



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at this stage where Skyhook is simply asking for production of responsive documents that must

only be likely to lead to admissible evidence. That is the standard set by Rule 26 of the Federal

Rules of Civil Procedure and Google may not unilaterally elect to ignore it in favor of its own

amorphous relevance standard. Google has refused repeatedly to provide any evidence that the

production of Mr. Brins documents would in fact yield material that would not be likely to lead

to admissible evidence. It has flatly refused to provide Skyhook with even the mere counts of

the number of responsive hits to each of Skyhooks requested six search strings. Google

similarly refused to provide confirmation from Mr. Brin that he has no knowledge relevant in the

areas that Skyhook has been interested in. Instead of speaking with him about his participation

at Macworld, for example, Google repeatedly insisted that he was one of roughly 50,000

persons [who] attended MacWorld 2008. Ex. 3 (June 24, 2013 S. Dutta Email) at 1. But that is

beside the point: very few if any of those 50,000 persons had a picture of their conversation with

Apples Steve Jobs taken at the very same event and preserved for posterity. Ex. 8. This picture

at minimum shows that at the time Mr. Brin had unprecedented access to Apples high-level

executives, and makes it at least more likely that he in fact engaged in the discussions with Apple

that Skyhook understands related to its technology. Finally, Google has failed to even attempt to

prove that any responsive documents found in Mr. Brins files are duplicative of files already

produced to Skyhook. And it likely cannot provide such proof because Google has so far

carefully guarded its high-level executives from this litigation and none of those executives is a

custodian in this case so far.

Googles repeated unsupported statements about Mr. Brins lack of any relevant

involvement and alleged harassment by Skyhook are almost exactly like the arguments

Microstrategy advanced recently when trying to prevent production of documents from its



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founder and CEO, Michael Saylor. Vasudevan Software, Inc. v. Microstrategy Inc., No. 11-cv-

06637-RS-PSG, 2012 U.S. Dist. LEXIS 163654, at *17-18 (N.D. Cal. Nov. 15, 2012). (The

Court may recall that Mr. Saylor is famous as the person who lost 6 billion in personal worth in a

single day in 2000.) The plaintiff sought Mr. Saylors documents in part because as the founder

and CEO he would be more knowledgeable than anyone else at Microstrategy about big picture

subjects including patent licensing and avoiding infringement. Id. at *17. The Court ordered

production, stating in words that equally apply to this case:

Other than pointing to Saylors position and stating without evidence that he isnot involved, Microstrategy provides no argument beyond reciting that VSIs

request is harassing. Especially in light of the broad interpretation ofrelevance under Fed. R. Civ. P. 26, VSI has made a persuasive showing that

Saylors emails may be relevant and may lead to admissible evidence if notadmissible themselves. Saylor is the founder and CEO of the company; he would

most likely have information lower-level employees do not.

Id. at *18.

Having failed to offer any evidence that the production of Mr. Brins documents would

duplicate the documents Google has previously produced in this litigation or would present any,

let alone undue, burden, Google must now produce those documents. The arguments about Mr.

Brins unique knowledge about matters relevant to this litigation must be left for another day

certainly for days after Skyhook has received and reviewed Mr. Brins documents itself for

relevance and to the extent Skyhook decides to proceed with Mr. Brins deposition.

IV. GOOGLE MUST PRODUCE ALL DEPOSITION TRANSCRIPTS ANDDISCOVERY RESPONSES FROM TRACBEAM LITIGATION

A. FACTUAL BACKGROUNDGoogle is a defendant in a case involving patents that allegedly relate to methods and

systems for determining the location of mobile devices using multiple location techniques.

TracBeam v. AT&T et al., Case No. 6:11-CV-96, Dkt. No. 352 (E.D Tex. Jan. 23, 2013 Mem.



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Opinion and Order) at 1. Skyhook had also been sued by the same plaintiff but it has since

settled the case. In March 2013, Skyhook requested Googles documents from the TracBeam

litigation, as Google requested the same from Skyhook. Ex. 9 (Mar. 6, 2013 Email from A.

Hadzimehmedovic). Skyhook produced information relevant to Googles request, but Google

failed to reciprocate. Id. Skyhook then served a targeted request for production of documents

Google has produced in that litigation:

All Documents or Things produced or made available for inspection in TracBeam,L.L.C. v. Google, Inc., Case No. 6:13-cv-00093, including without limitation

depositions and discovery responses

Ex. 6 (May 2, 2013 Googles Resps. To Skyhooks 3rd Set of RFPs, RFP 303) at 120 (emphasis

added). Google did not initially agree to produce documents but agreed to meet and confer about

the scope of a potential production. Id. at 121. During the meet and confers, Skyhook told

Google that it was particularly interested in Googles depositions and discovery responses from

that litigation (as its request specifically stated), and the burden of turning over those limited

documents must be negligible. A. Hadzimehmedovic Aff. 3. Skyhook explained that the

apparent overlap in the accused products and potentially also in damages issues warranted

production of corporate and individual depositions of all witnesses. Id. Skyhook also

underscored its continued concern with Googles unwillingness to provide discovery into its

marketing, distribution and sales of the accused products, including the identification of persons

involved in those activities. Id.; Dkt. No. 173 (Skyhooks Mot. to Compel) at 19-20

As a result of the meet-and-confer process, Google agreed to produce: (1) documents

produced in Tracbeam that have not been produced in this action and (2) transcripts of

depositions taken in the Tracbeam action for witnesses who are common to both actions. Ex. 2

(June 18, 2013 Email from T. Lundin) at 3. When asked to confirm specifically whether

category (1) included Googles discovery responses in that case, Google confirmed that it did not



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and that it was in fact refusing to produce its discovery responses from that litigation. Ex. 3

(June 24, 2013 Email from S. Dutta) at 2. Google also refused to produce all individual and

corporate depositions, or to even identify the witnesses whose depositions it was notwilling to

produce. Id.

B. GOOGLES BURDEN AND RELEVANCE ARGUMENTS FAIL INLIGHT OF ITS OWN CONDUCT AND ADMISSIONS

Googles claim that it is unduly burdensome to produce the discovery responses and all

depositions, Ex. 3 (June 24, 2013 S. Dutta Email) at 2, is not credible. It is significantly less

burdensome to produce these sorts of documents than to engage in the analysis Google already

agreed to engage in, which is to sort through the production in that case to identify documents

not produced in the present case and reproduce them here. Moreover, Googles Bingham

McCutchen lawyers representing it in that caseSusan B. Manning and Robert C. Burtin

represent Google in this case as well. All they need to do is look at their files and produce

deposition transcripts and discovery responses in this case. Moreover, these sorts of discovery

documents are more likely to focus Skyhooks review of the TracBeam litigation documents and

may contain information that Google has been refusing to provide in interrogatory responses and

depositions in this case. The SRA case, which Skyhook brought up at the last hearing, shows

that Google has produced documents in at least one other litigation that it refuses to produce

here. SeeIn re Google Litig., 2011 U.S. Dist. LEXIS 125732, at *19 (N.D. Cal. Oct. 31, 2011);

compare, e.g., Skyhooks RFP 55 (All Documents Relating To Your corporate licensing policy

or procedures) with SRAs RFP 126 in that case (Documents concerning Google's licensing

policies regarding in-bound and outbound licensing practices); compare also Skyhooks RFPs

51-53 with SRAs RFP No. 161 and Skyhooks RFPs 90 and 91 with SRAs RFP 125.



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Googles relevance arguments are equally misplaced. Google argues that the discovery

responses and depositions of individuals it refuses to identify are not relevant to this case, and

then asks Skyhook to prove how those unidentified depositions and discovery responses

Skyhook has never seen are relevant. First, TracBeams Complaint alleges that Googles

infringing products and services include, without limitation, its products and services for

determining the locations of wireless mobile devices, including its My Location product. See

Case No. 6:11-cv-96, Dkt No. 57 (TracBeams 1st Supp. Amd. Complaint), 39. The same

products are accused here. Second, Googles own statements in the TracBeam case support the

overlap in subject matter and accused products between the two cases. In that case, when

moving to sever its case from that of Skyhook, Google argued that if Google had to cooperate

with its then co-defendant Skyhook in TracBeam case, Skyhooks counsel in that case could

potentially provide Skyhook insight into Googles products and confidential technical

information that may be used against it in this case. Id., Dkt. No. 353 (Order to Mot. to Sever) at

3. If there was no significant overlap in accused products and technical information, Google

could not have credibly made that representation to the court in Texas. Finally, Googles

agreement to produce othermaterials from the TracBeam litigation is itself a concession about

the relevance of the litigation materials from that case to this case.

For all of the above reasons, Google should be compelled to produce all documents

produced in the TracBeam litigation, including specifically all deposition transcripts and

discovery responses.

V. GOOGLE MUST PRODUCE ITS AGREEMENTS RELATED TO ACCUSEDPRODUCTS AND NEGOTIATIONS RELATING TO THEM OR PROVE THAT

ITS PRODUCTION IS COMPLETE

Skyhooks Request for Production No. 199 reads:



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All Documents Relating To any agreements with Motorola, Samsung, LG, HTC,any other OEM, or any Person Concerning Google Location, including all

documents reflecting negotiations concerning any such agreement.

Ex. 6 (May 2, 2013 Googles Resps. to Skyhooks 3rd Set of RFPs) at 24. Google responded, in

substantive part as follows:

Subject to and without waiving the foregoing and all General Objections set forth

above and in Exhibit A, and to the extent Google understands this request, Googlestates that it has produced such non-privileged documents as exist in its

possession, custody, or control, as have been located after a reasonable and goodfaith search that are responsive to this Request.

Id. at 25 (emphasis added). During the meet-and-confers, however, Google has been unwilling

or unable to explain why it believes that it has completed its production of documents responsive

to this request, in particular why it believes that its electronic search terms covered the

production of negotiations for any agreements with its OEM partners. Ex. 3 (June 23, 2013

Email from A. Hadzimehmedovic). In fact, Googles identification of documents it believes are

responsive to this request evidences the incompleteness of Googles production. Ex. 10 (June 27,

2013 Email from S. Dutta) at 2-3. Among those documents Google identified in its production,

only a handful of documents reflect Googles negotiations with third parties. These documents,

which Google apparently would have Skyhook and the Court believe is the entirety of its

negotiations with any third parties relating to Google Location over at least half-dozen years that

Skyhooks requests cover, total less than two hundred pages, which is less than a drop in

Googles production bucket. But Googles negotiations with its Android partners form a

significant part of its business and thus its minuscule negotiations production does not fairly

reflect its interactions relating to Google Location. Further, notably absent from this collection

are any directcommunications with any third parties relating to Google Location. Skyhooks

request is simple: Google must complete its production of documents responsive to this request,

in particular direct negotiations with third parties regarding Google Location, or in the alternative



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must certify in a sworn declaration that its production is complete and include production (Bates)

number identification of the produced Google Location agreements and negotiation documents

related to each of those agreements.

For the foregoing reasons, Skyhook respectfully requests that this Court compel Google

to provide Mr. Patrick Brady for a deposition and produce documents responsive to Skyhooks

Request for Production Nos. 199, 303, and 316 as detailed in this Memorandum and specified in

the Proposed Order (attached to Skyhooks Motion).

Dated: July 1, 2013 Respectfully submitted:

/s/ Azra M. Hadzimehmedovic

Matthew D. Powers (pro hac vice)

Steven S. Cherensky (pro hac vice)Paul T. Ehrlich (pro hac vice)

William P. Nelson (pro hac vice)Azra M. Hadzimehmedovic (pro hac vice)

Aaron M. Nathan (pro hac vice)

TENSEGRITY LAW GROUP LLP555 Twin Dolphin Drive, Suite 360Redwood Shores, CA 94065

(650) [email protected]

[email protected]@tensegritylawgroup.com

[email protected]@tensegritylawgroup.com

[email protected]

Thomas F. Maffei (BBO 313220)Douglas R. Tillberg (BBO 661573)

GRIESINGER, TIGHE & MAFFEI, LLP176 Federal Street

Boston, Massachusetts 02110(617) 542-9900

[email protected]@gtmllp.com



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Attorneys forSkyhook Wireless, Inc.



22/22

CERTIFICATE OF SERVICE

I hereby certify that I caused a true and correct copy of the foregoing to be served via the

ECF system of the District of Massachusetts this 1st day of July 2013, on all counsel of record.

/s/ Azra M. Hadzimehmedovic
