Case 4:16-cv-01730-YGR Document 49-6 Filed 05/09/16 Page 1 of 8
`
`Exhibit E
`
`

`

`Case 4:16-cv-01730-YGR Document 49-6 Filed 05/09/16 Page 2 of 8
`
`Warren McCarty
`
`From:
`Sent:
`To:
`Cc:
`
`Subject:
`
`Morton, Phillip <pmorton@cooley.com>
`Friday, May 06, 2016 5:48 PM
`Warren McCarty; windycity@caldwellcc.com
`McBride, John W.; Yang, Irene; Cederoth, Richard A.; Keefe, Heidi; Rodriguez, Raquel C.; z/Facebook v.
`Windy City
`Re: Windy City v. Facebook / Microsoft - Request to Identify Asserted Claims
`
`Warren-
`
`Thank you for your email. We are encouraged by Windy City's willingness to agree to limit itself to 40 asserted claims, just as
`Facebook requested in its motion. If Windy City would provide the 40 asserted claims (not the full contentions) it has offered
`to identify in about the next ten days rather than several months from now, this motion could be resolved.
`
`Regarding the specific narrowing proposal, the defendants are willing to work to find ways to focus the issues in this litigation,
`including narrowing of prior art references as appropriate. While your proposal includes a promising framework, we cannot
`yet agree to the specific numeric limits you have proposed when the defendants remain in the dark about the accused
`products, asserted claims and the extent of overlap between the claims Windy City intends to select for the Facebook and
`Microsoft cases.
`
`Finally, we believe it is improper to request entry of the specific narrowing proposal you offered for the first time via the
`below email in an opposition brief to an administrative motion.
`
`Regards,
`Phil
`
`Phillip E. Morton
`Cooley LLP
`Direct: +1 202 728 7055 * Cell: +1 703 298 2746
`
`
`
`
`
`
`
`
`On 5/5/16, 3:00 PM, "Warren McCarty" <wmccarty@caldwellcc.com> wrote:
`
`>Phillip:
`>
`>Facebook’s Administrative Motion gives the impression that Windy City is unwilling to narrow this case. You know that is
`not true. During the parties’ meet and confer on 5/3, Windy City offered multiple times to narrow the scope of our
`infringement case if Defendants were willing to make similar, reciprocal narrowing of prior art, as is envisioned by the various
`model orders on this issue, including the Federal Circuit Advisory Counsel and Eastern District of Texas model orders.
`Facebook, however, undermined the possibility of any progress on that front by insisting upon a one-sided deal that offered
`no benefit to Windy City in exchange for narrowing the full scope of the infringement claims in this case. Your motion states
`that Facebook “is willing to engage in meaningful efforts to narrow the scope of this case.” If that is true, then perhaps we
`can reach agreement on some framework for doing so.
`>
`>To be clear, the full scope of Defendants' infringement is far greater than forty claims and Windy City is prepared to identify
`the full scope of that infringement on the date for compliance with P.R. 3-1/3-2. Nevertheless, in the interest of compromise,
`Windy City is prepared to agree to the following proposal:
`
`1
`
`

`

`Case 4:16-cv-01730-YGR Document 49-6 Filed 05/09/16 Page 3 of 8
`
`>
`>- On the date set for compliance with P.R. 3-1 and P.R. 3-2, Windy City shall serve a Preliminary Election of Asserted
`Claims, which shall assert no more than 10 claims from each patent and not more than a total of 40 claims in each case.
`>- On the date set for compliance with P.R. 3-3 and P.R. 3-4, Defendants shall serve a Preliminary Election of Asserted Prior
`Art, which shall assert no more than 12 prior art references against each patent and not more than a total of 40 references.
`>- No later than 28 days before the service of expert reports, Windy City shall serve a Final Election of Asserted Claims,
`which shall identify no more than 5 asserted claims per patent from among the 10 previously identified claims and no more
`than a total of 20 claims. By the date set for the service of burden expert reports, the Defendants shall serve a Final Election
`of Asserted Prior Art, which shall identify no more than 6 asserted prior art references per patent from among the 12 prior art
`references previously identified for that particular patent and no more than a total of 20 references. For purposes of this Final
`Election of Asserted Prior Art, each obviousness combination counts as a separate prior art reference.
`>
`>It should be noted that this proposal is on a faster schedule than either of the model orders from the Federal Circuit
`Advisory Council or the Eastern District of Texas, because Windy City is narrowing claims before receiving discovery from
`Defendants. Defendants would then have until the date of their P.R. 3-3/3-4 deadline to review Windy City’s infringement
`contentions and make prior art elections. Please let us know by 5PM tomorrow if Defendants agree to the schedule above. If
`not, Windy City intends to request an order from the Court entering the above schedule in its response to Facebook’s motion.
`>
`>Thank you,
`>Warren
`>
`>-----Original Message-----
`>From: Morton, Phillip [mailto:pmorton@cooley.com]
`>Sent: Monday, May 02, 2016 5:01 PM
`>To: Warren McCarty <wmccarty@caldwellcc.com>; windycity@caldwellcc.com
`>Cc: McBride, John W. <jwmcbride@sidley.com>; Yang, Irene <irene.yang@sidley.com>; Cederoth, Richard A.
`<rcederoth@sidley.com>; Keefe, Heidi <hkeefe@cooley.com>; Rodriguez, Raquel C. <raquel.rodriguez@sidley.com>
`>Subject: Re: Windy City v. Facebook / Microsoft - Request to Identify Asserted Claims
`>
`>Warren-
`>
`>Let’s talk tomorrow morning at 10am CT. Microsoft’s counsel will join as well. We can use the following dial-in: 877-211-
`3621 passcode 115 697 0989
`>
`>Thanks,
`>Phil
`>
`>
`>Phillip E. Morton
`>Cooley LLP
`>Direct: +1 202 728 7055 * Cell: +1 703 298 2746
`>
`>
`>
`>
`>
`>
`>
`>
`>On 5/2/16, 1:02 PM, "Warren McCarty" <wmccarty@caldwellcc.com> wrote:
`>
`>>Hi Phillip,
`>>
`>>It seems like you are determined to burden the Court with this issue. While Windy City would prefer not to bring case-
`narrowing disputes like this to the Court (especially now, when the dispute is in its infancy and the parties have not even
`discussed it via telephone), we cannot agree to drop 95% of claims and serve some form of final claim elections to Defendants
`in a matter of days. As I stated before, we would be more than willing to discuss a limit on the number of claims that are
`2
`
`

`

`Case 4:16-cv-01730-YGR Document 49-6 Filed 05/09/16 Page 4 of 8
`asserted in Windy City's infringement contentions (assuming we get some form of reciprocity from Defendants). But it's now
`clear that narrowing the case isn't your goal; it appears that you just want Windy City to tell you which 40 claims to IPR.
`Besides being procedurally improper, your proposal is just way too late. You could have raised this months ago, but you guys
`ignored this issue for something like 320 days, only now to demand that Windy City bail you out and enter into this one-sided
`agreement. Your proposal is impractical, and actually has little to do with narrowing the district court case.
`>>
`>>I do appreciate your offer to allow Windy City's experts to review source code before discovery opens in this case. I think
`that's a great idea. As I'm sure you will understand, it is unworkable to negotiate a protective order, get all parties to sign off on
`that order, hire source code reviewers, disclose those reviewers to Defendants and get them cleared, make them available to
`review code, send them across the country to different facilities to review code, analyze the code, and make these near-final
`elections, all in a matter of days. That process takes months. I think we can go ahead and start working on a protective order,
`though. Maybe we can shoot for some early source code review days in July before infringement contentions are due.
`>>
`>>In short, if you are dead-set on filing your motion, then please mark Windy City as opposed. If, on the other hand, you'd
`like to have a productive discussion about reducing the number of claims and prior art in this case, I would be happy to do so.
`I am available in my office today at 5pm central, or generally tomorrow morning. Just let everyone know if/when you plan on
`calling so we can get someone from Microsoft on the line too.
`>>
`>>Thanks,
`>>Warren
`>>
`>>-----Original Message-----
`>>From: Morton, Phillip [mailto:pmorton@cooley.com]
`>>Sent: Saturday, April 30, 2016 6:03 AM
`>>To: Warren McCarty <wmccarty@caldwellcc.com>; windycity@caldwellcc.com
`>>Cc: McBride, John W. <jwmcbride@sidley.com>; Yang, Irene <irene.yang@sidley.com>; Cederoth, Richard A.
`<rcederoth@sidley.com>; Keefe, Heidi <hkeefe@cooley.com>
`>>Subject: Re: Windy City v. Facebook / Microsoft - Request to Identify Asserted Claims
`>>
`>>Warren-
`>>
`>>Thank you for responding to my email. Below are answers to your questions on behalf of Facebook. Please confirm by
`the end of the day Monday whether Windy City opposes Facebook’s motion. Otherwise, we will assume Windy City’s
`opposition and note for the Court that Windy City declined to meet and confer.
`>>
`>>1) "The current deadline to serve initial disclosures in the Facebook case is less than 45 days after your proposed narrowing
`date, and Windy City will serve its infringement contentions in July, what is the newfound burden facing Defendants in the
`interim (particularly in light of Defendants’ decision to wait so long to raise this concern in the first place)?"
`>>
`>>Response: The issue of Windy City’s failure to identify any asserted claims was raised in both Defendants’ motions to
`dismiss. As you know, Facebook's motion to transfer was pending before the Court in North Carolina for over 6 months.
`After the case was transferred to California, Facebook promptly raised the issue here. In addition, the deadline for filing IPRs
`is a five weeks away, and Windy City’s ongoing refusal to identify any asserted claims significantly prejudices the parties’
`efforts to prepare IPR petitions focused on the claims Windy City actually intends to assert.
`>>
`>>2) "Do Defendants have a proposal for a reciprocal narrowing, and early identification of, prior art? If so, what is
`Defendants’ proposal?"
`>>
`>>Response: Facebook believes this case should be narrowed to a reasonable scope, including the narrowing of claims as
`both defendants have requested and focused prior art invalidity contentions after receiving Windy City’s infringement
`contentions (which are necessary to understand how Windy City is reading its claims on the Defendants’ products and services
`given the vagueness of Windy City’s complaint). The scope of any narrowing will of course depend on the claims selected by
`Windy City, the accused products and whether the same claims will be asserted against both defendants.
`>>
`>>3) "In the reciprocal narrowing of prior art, do Defendants agree to treat each obvious combination as a separate
`reference?"
`>>
`
`3
`
`

`

`Case 4:16-cv-01730-YGR Document 49-6 Filed 05/09/16 Page 5 of 8
`>>Response: If you are referring to the prior art assertions of A, A+B, A+B+C and A+C being 4 grounds, instead of 3, we
`think that such an agreement could be reached as part of a negotiated agreement to narrow the asserted claims.
`>>
`>>4) "In the reciprocal narrowing of prior art, do Defendants agree to be bound by each other’s elections (i.e. the total limit
`on prior art references is across both cases)?"
`>>
`>>Response: Without knowing which claims are selected, which products are accused, and whether the same claims will be
`asserted against both defendants, Facebook cannot yet agree to this proposal.
`>>
`>>5) "Does Defendants’ proposal include withdrawing the pending 12(b)(6) motions as to direct infringement if Windy City
`narrows its claims at this early stage?"
`>>
`>>Response: No. Facebook's pending 12(b)(6) motion relates to broader issues than the selection of claims.
`>>
`>>6) "Do Defendants intend to answer the Complaints if Windy City narrows its claims at this early stage?"
`>>
`>>Response: Facebook will answer the complaints at an appropriate time after the Court addresses the motion to dismiss.
`>>
`>>7) "Do Defendants plan on filings IPRs? If so, do Defendants agree that any early claim elections are without prejudice to
`electing new claims depending on the status of the IPR proceedings?"
`>>
`>>Response: As noted above, Facebook intends to file IPRs. The whole point of this request is to narrow this case to a
`realistic scope for the benefit of the Court and the PTAB. Facebook does not agree that Windy City can constantly shift the
`asserted claims in this case as it sees how the IPR petitions play out at the PTAB.
`>>
`>>8) "If Defendants do plan on filing IPRs, do they intend to also move to stay the district court proceedings?"
`>>
`>>Response: The Defendants have not decided on that issue yet. Would Windy City agree to stay the district court litigation
`pending decisions on the IPRs?
`>>
`>>"As you know, Windy City has taken no discovery at this point, making it prejudicial and particularly burdensome to
`blindly remove 95% of the claims from the case at this early stage, and identify to Defendants in a matter of days the 5% that
`are remaining. The Court's schedule/local rules for initial disclosures and infringement contentions set out a timeline for the
`parties to make these disclosures, and while Windy City is happy to discuss ways to narrow the cases along the way in a fair
`and logical manner, it also wants to follow the guidance and schedules set forth by the Courts and the local rules."
`>>
`>>Response: Upon entry of a protective order, Facebook will be happy to make its source code available for review by
`Windy City’s counsel and approved experts prior to the May 15 deadline (a benefit not afforded to Windy City under the
`patent local rules before providing infringement contentions).
`>>
`>>"On a final note, your claim that Windy City has multiplied the litigation is inaccurate, and unnecessary. “Multiplying”
`proceedings under 28 U.S.C. § 1927 relates to recklessness and bad faith behavior; not the number of claims that were granted
`in a particular asserted patent. And your observation that Windy City has not yet “identified” claims is puzzling—initial
`disclosures and infringement contentions are due in the coming weeks, as outlined in the recent orders from Judges Seeborg
`and Gonzalez Rogers. Windy City strives to handle disputes between the parties professionally and responsibly; we hope that
`you and other members of your firm will approach this case in a like manner, and refrain from making veiled threats of the
`kind contained in your first email below.”
`>>
`>>Response: We did not raise Section 1927, you did. The record thus far in this case speaks for itself.
`>>
`>>Regards,
`>>Phil
`>>
`>>
`>>
`>>Phillip E. Morton
`>>Cooley LLP
`
`4
`
`

`

`Case 4:16-cv-01730-YGR Document 49-6 Filed 05/09/16 Page 6 of 8
`>>Direct: +1 202 728 7055 * Cell: +1 703 298 2746
`>>
`>>
`>>
`>>
`>>
`>>
`>>On 4/26/16, 4:11 PM, "Warren McCarty" <wmccarty@caldwellcc.com> wrote:
`>>
`>>>Phillip,
`>>>
`>>>Thank you for your email. Windy City is always willing to discuss ways to streamline the cases throughout the litigation
`where possible and when appropriate. However, we're not sure why you’re now requesting Windy City to drop claims when
`this case has been pending for 10 months without any effort from Defendants to advance it. Some clarity from y'all on the
`reason for the urgency would help frame any discussions. In any event, our client will need more than the 1 or 2 business days
`you offered to consider a proposal of this magnitude--eliminating 95% of the claims from the cases. In the meantime, it
`would move things along if you could please answer some clarifying questions below so that Windy City can understand, and
`fully evaluate your proposal:
`>>>
`>>>1. The current deadline to serve initial disclosures in the Facebook case is less than 45 days after your proposed
`narrowing date, and Windy City will serve its infringement contentions in July, what is the newfound burden facing
`Defendants in the interim (particularly in light of Defendants’ decision to wait so long to raise this concern in the first
`place)?
`>>>2. Do Defendants have a proposal for a reciprocal narrowing, and early identification of, prior art? If so, what is
`Defendants’ proposal?
`>>>3. In the reciprocal narrowing of prior art, do Defendants agree to treat each obvious combination as a separate
`reference?
`>>>4. In the reciprocal narrowing of prior art, do Defendants agree to be bound by each other’s elections (i.e. the total
`limit on prior art references is across both cases)?
`>>>5. Does Defendants’ proposal include withdrawing the pending 12(b)(6) motions as to direct infringement if Windy
`City narrows its claims at this early stage?
`>>>6. Do Defendants intend to answer the Complaints if Windy City narrows its claims at this early stage?
`>>>7. Do Defendants plan on filings IPRs? If so, do Defendants agree that any early claim elections are without prejudice
`to electing new claims depending on the status of the IPR proceedings?
`>>>8. If Defendants do plan on filing IPRs, do they intend to also move to stay the district court proceedings?
`>>>
`>>>As you know, Windy City has taken no discovery at this point, making it prejudicial and particularly burdensome to
`blindly remove 95% of the claims from the case at this early stage, and identify to Defendants in a matter of days the 5% that
`are remaining. The Court's schedule/local rules for initial disclosures and infringement contentions set out a timeline for the
`parties to make these disclosures, and while Windy City is happy to discuss ways to narrow the cases along the way in a fair
`and logical manner, it also wants to follow the guidance and schedules set forth by the Courts and the local rules.
`>>>
`>>>On a final note, your claim that Windy City has multiplied the litigation is inaccurate, and unnecessary. “Multiplying”
`proceedings under 28 U.S.C. § 1927 relates to recklessness and bad faith behavior; not the number of claims that were granted
`in a particular asserted patent. And your observation that Windy City has not yet “identified” claims is puzzling—initial
`disclosures and infringement contentions are due in the coming weeks, as outlined in the recent orders from Judges Seeborg
`and Gonzalez Rogers. Windy City strives to handle disputes between the parties professionally and responsibly; we hope that
`you and other members of your firm will approach this case in a like manner, and refrain from making veiled threats of the
`kind contained in your first email below.
`>>>
`>>>If you could please answer the questions above, that would help move along the process while we discuss with our client.
`Thank you.
`>>>
`>>>Best Regards,
`>>>Warren
`>>>
`>>>-----Original Message-----
`
`5
`
`

`

`Case 4:16-cv-01730-YGR Document 49-6 Filed 05/09/16 Page 7 of 8
`>>>From: Morton, Phillip [mailto:pmorton@cooley.com]
`>>>Sent: Tuesday, April 26, 2016 11:58 AM
`>>>To: Warren McCarty <wmccarty@caldwellcc.com>; windycity@caldwellcc.com
`>>>Cc: McBride, John W. <jwmcbride@sidley.com>; Yang, Irene <irene.yang@sidley.com>; Cederoth, Richard A.
`<rcederoth@sidley.com>; Keefe, Heidi <hkeefe@cooley.com>
`>>>Subject: Re: Windy City v. Facebook / Microsoft - Request to Identify Asserted Claims
`>>>
`>>>Warren-
`>>>
`>>>We have not received any response to our request to meet and confer regarding the below. Please let me know when you
`are available to meet and confer today.
`>>>
`>>>Regards,
`>>>Phil
`>>>
`>>>Phillip E. Morton
`>>>Cooley LLP
`>>>Direct: +1 202 728 7055 * Cell: +1 703 298 2746
`>>>
`>>>
`>>>From: Phillip Morton <pmorton@cooley.com<mailto:pmorton@cooley.com>>
`>>>Date: Thursday, April 21, 2016 at 6:36 PM
`>>>To: Warren McCarty <wmccarty@caldwellcc.com<mailto:wmccarty@caldwellcc.com>>,
`"windycity@caldwellcc.com<mailto:windycity@caldwellcc.com>"
`<windycity@caldwellcc.com<mailto:windycity@caldwellcc.com>>
`>>>Cc: "McBride, John W." <jwmcbride@sidley.com<mailto:jwmcbride@sidley.com>>, "Yang, Irene"
`<irene.yang@sidley.com<mailto:irene.yang@sidley.com>>, "Cederoth, Richard A."
`<rcederoth@sidley.com<mailto:rcederoth@sidley.com>>, Heidi Keefe
`<hkeefe@cooley.com<mailto:hkeefe@cooley.com>>
`>>>Subject: Windy City v. Facebook / Microsoft - Request to Identify Asserted Claims
`>>>
`>>>Warren-
`>>>
`>>>Facebook and Microsoft request that no later than May 16, 2016, Windy City identify no more than 40 total asserted
`claims that Windy City intends to assert against each defendant in this litigation. As you know, there are 830 claims in the four
`asserted patents and Windy City has not identified a single asserted claim against either defendant. The lack of identified
`claims unnecessarily multiplies the proceedings, as it requires the parties to evaluate invalidity and non-infringement defenses
`on hundreds of claims that Windy City will never assert in this litigation.
`>>>
`>>>To be clear, Facebook and Microsoft are not asking Windy City to provide infringement contentions at this time, only the
`identification of the asserted claims.
`>>>
`>>>Please confirm that Windy City will identify no more than 40 asserted claims that it will assert against each defendant no
`later than May 16, 2016.
`>>>
`>>>If Windy City is unwilling to identify no more than 40 asserted claims by May 16, 2016, please let us know when you are
`available to meet and confer on Friday or Monday, as Facebook and Microsoft intend to file motions in their respective cases
`asking the Court to order Windy City to identify asserted claims as requested above.
`>>>
`>>>Regards,
`>>>Phil
`>>>
`>>>Phillip E. Morton
`>>>Cooley LLP
`>>>Direct: +1 202 728 7055 * Cell: +1 703 298 2746
`>>>
`>>>
`
`6
`
`

`

`Case 4:16-cv-01730-YGR Document 49-6 Filed 05/09/16 Page 8 of 8
`
`>>>
`>>>
`>>>________________________________
`>>>
`>>>This email message is for the sole use of the intended recipient(s) and may contain confidential and privileged
`information. Any unauthorized review, use, disclosure or distribution is prohibited. If you are not the intended recipient,
`please contact the sender by reply email and destroy all copies of the original message. If you are the intended recipient, please
`be advised that the content of this message is subject to access, review and disclosure by the sender's Email System
`Administrator.
`>>>
`>>
`>>________________________________
`>>
`>>This email message is for the sole use of the intended recipient(s) and may contain confidential and privileged information.
`Any unauthorized review, use, disclosure or distribution is prohibited. If you are not the intended recipient, please contact the
`sender by reply email and destroy all copies of the original message. If you are the intended recipient, please be advised that
`the content of this message is subject to access, review and disclosure by the sender's Email System Administrator.
`>>
`>
`>________________________________
`>
`>This email message is for the sole use of the intended recipient(s) and may contain confidential and privileged information.
`Any unauthorized review, use, disclosure or distribution is prohibited. If you are not the intended recipient, please contact the
`sender by reply email and destroy all copies of the original message. If you are the intended recipient, please be advised that
`the content of this message is subject to access, review and disclosure by the sender's Email System Administrator.
`>
`
`________________________________
`
`This email message is for the sole use of the intended recipient(s) and may contain confidential and privileged information.
`Any unauthorized review, use, disclosure or distribution is prohibited. If you are not the intended recipient, please contact the
`sender by reply email and destroy all copies of the original message. If you are the intended recipient, please be advised that
`the content of this message is subject to access, review and disclosure by the sender's Email System Administrator.
`
`
`7
`
`