Case 4:18-cv-06185-HSG Document 46-2 Filed 03/12/19 Page 1 of 12
`Case 4:18-cv-06185—HSG Document 46-2 Filed 03/12/19 Page 1 of 12
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`EXHIBIT A
`EXHIBIT A
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`

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`Case 4:18-cv-06185-HSG Document 46-2 Filed 03/12/19 Page 2 of 12
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`From:
`Sent:
`To:
`Cc:
`
`Subject:
`
`Schulz, Bradford <Bradford.Schulz@finnegan.com>
`Tuesday, March 12, 2019 3:53 PM
`Hartman, Sarah G.
`Su, Michael; AGIS-Lit; Lambrianakos, Peter; Rubino, Vincent J.; Sivakumar, Arjun;
`Lavenue, Lionel
`RE: ZTE (USA) Inc. v. AGIS Software Development LLC, et al. - Case. No. 4:18-cv-06185-
`HSG
`
`Sarah,
`
`As previously stated, our understanding of the Protective Order is different, and we disagree with your assessment in
`this dispute. As to your complaints, not only has ZTE explained how the ambiguous terms of the Protective Order
`created this dispute, but ZTE further explained how several of the referenced sections of the Response are corroborative
`in nature. See ZTE correspondence on March 6, 2019 and March 8, 2019. Nevertheless, given AGIS’s objection and in an
`effort to minimize resources to this issue, ZTE agreed to withdraw the designated Exhibits at issue and their associated
`non-sealed documents (previously labeled “the Documents”), prior to the Civil L.R. 79-5(e)(1)-(2) deadline.
`
` I
`
` am sure you are aware that Civil L.R. 79-5(e)(1)-(2) provides the party designating the material, i.e. AGIS, four days to
`file a declaration in support of the sealing motion; otherwise, the sealed documents become unsealed. As such, to
`prevent the Documents’ unsealing by operation of local rule, there was a March 11, 2019 deadline for withdrawing the
`AGIS’s designated Documents.
`
`Last night, ZTE did as it agreed and followed the Northern District of California local procedures for withdrawing the
`Documents through an Administrative Motion. As you indicated, AGIS refused to agree to that Motion (twelve minutes
`before the established deadline on March 11, 2019), so ZTE filed the Administrative Motion with a declaration rather
`than a joint stipulation.
`
`As it stands, the uncontested Exhibits, and the redacted versions of the Response and the supporting Declaration remain
`on the record. The remaining Exhibits are publicly available, and AGIS does not contest this fact. As for the remaining
`redacted Response and supporting Declaration, they both further rely on publicly available and non-confidential
`information. Any information that is not corroborated by public information or citations is properly redacted.
`
`For instance, as previously noted:
`
`
`• The proposition that AGIS, Inc. and AGIS Software share the same corporate officers is not confidential
`information. See ZTE correspondence on March 8, 2019. As such, this proposition did not require redaction in
`the Response. See the Response, pp. 6 & 10.
`
`• The fact that AGIS hired California-based entities is supported by the public record. See ZTE correspondence on
`March 8, 2019; see also the Response, p. 21. As an example of corroborating public evidence, the Response
`states that “[a]lso, AGIS hired California-based firm Green Hills Software to promote, market, and test the
`patented technology, in California. Life360-California, Dkt. 52 at 6-7; Ex. 13. Additionally, AGIS hired California-
`based [redacted].” The Green Hills Software (a California resident) evidence is supported by public filings. As
`such, the fact that “AGIS hired California-based” entities did not require redaction in the Response. See the
`Response, pp. 21.
`
`
`
`1
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`

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`Case 4:18-cv-06185-HSG Document 46-2 Filed 03/12/19 Page 3 of 12
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`AGIS now newly references conclusory lists on pp. 13 and 23 of the Response. But, like the above examples, these
`statements are supported by public information and public-citations throughout the Response. For example, the
`referenced list, see the Response, p. 13, is supported by public information:
`
`
`AGIS is unable to deny that the same corporate officers for AGIS, Inc. and AGIS Software devised a business plan
`to:
`
`1. design the underlying technology to assist with California emergencies, such as wildfires,
`a. The patents-in-suit further describe how the claimed technology provides ad hoc
`communication systems for emergency personnel responding to fires. See ’970 patent at 6:27-
`31; ’055 patent at 2:26-28, 7:48-52, 10:20-22, and Fig. 6; ’251 patent at 2:30-33, 8:60-64, 10:35-
`37, and Fig. 6; ’838 patent at 2:27-29, 7:52-56, 10:27-30, and Fig. 6; and ’829 patent at 2:28-37,
`7:60-64, 10:35-37, and Fig. 6.
`b. See also “COMM-OPS: UAV Cellular Payload for First Responder Emergency Teams,” by Robert
`Varga, July 2009 Ed. (available at
`http://www.milsatmagazine.com/story.php?number=1435005486) (indicating that LifeRing is
`one example of technology reacting to the “challenges during the 2007 wildfires in southern
`California”).
`2. hire employees to solicit users’ test feedback in California,
`a. One California Court already found that the evidence established that Mr. Beyer demonstrated
`LifeRing to representatives of private companies in California, Mr. Beyer permitted private
`companies to download LifeRing in California for purposes of evaluation, and Mr. Beyer reached
`out to and permitted Green Hills to test LifeRing and demonstrate it in California. See Life360-
`California, Dkt. 52 at *10-*12.
`b. Sandel Blackwell testified that AGIS, Inc. continues to develop the patented technology, the
`LifeRing product, and that this technology was regularly involved in field testing in San Diego,
`California, with the Joint Tactical Networking Center. Ex. 11 (3/9/15 Trial Tr. 145:16-17, 146:15-
`22); see also Ex. 12 (drawing recognition for the LifeRing test event). AGIS, Inc. even hired a
`California-based firm, Green Hills Software, to promote, market, and test the patented LifeRing
`technology in California. See Life360-California, Dkt. 52 at 6-7; Ex. 13.
`3. develop products based on the comments,
`a. Sandel Blackwell testified that AGIS, Inc. continues to develop the patented technology, the
`LifeRing product, and that this technology was regularly involved in field testing in San Diego,
`California, with the Joint Tactical Networking Center. Ex. 11 (3/9/15 Trial Tr. 145:16-17, 146:15-
`22); see also Ex. 12 (drawing recognition for the LifeRing test event). AGIS, Inc. even hired a
`California-based firm, Green Hills Software, to promote, market, and test the patented LifeRing
`technology in California. See Life360-California, Dkt. 52 at 6-7; Ex. 13.
`4. engage California attorneys to prosecute the resulting patent family—more than twelve continuation
`applications, including eight continuation-in-parts and the patents-in-suit,
`a.
`In order to circumvent the pre-AIA enablement requirement, the California based prosecuting
`attorney, Daniel Burns, represented to the USPTO that the patents-in-suit contain subject
`matter claiming priority after March 16, 2013, and should be considered under post-AIA law. See
`Huawei-EDTX matter, Dkt. 244 at 4-6; see also Ex. 30 at 2-3 (USPTO office action rejecting ’838
`patent application in part because certain added claim limitations lacked written description
`support); Ex. 31 at 3, 6; Ex. 32 at 15-16.
`license the products and patents to California entities,
`a. Further, AGIS, Inc. licenses the patents-in-suit. See Ex. 2 (licensing the patents-in-suit and
`indicating the LifeRing “applications, solutions, and software products” are covered by the
`patents-in-suit).
`b. David Sietsema licenses AGIS, Inc.’s patent portfolio, including the patents-in-suit. See Ex. 1,
`¶ 17; Ex. 2 (website available online to California residents).
`interfere with competitor’s businesses and contracts in California, and
`
`5.
`
`6.
`
`2
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`

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`Case 4:18-cv-06185-HSG Document 46-2 Filed 03/12/19 Page 4 of 12
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`a. On May 16, 2014, AGIS, Inc. filed its first-ever complaint asserting, among others, the ’728 and
`’474 patents against California-resident and direct competitor, Life360, Inc. (“Life360”). See
`Life360-Florida, Dkt. 1.
`b. For instance, after suing Life360 for alleged infringement of this patent family, AGIS, Inc.
`“communicated with [third party] ADT” and “threatened ADT with a lawsuit for patent
`infringement arising out of ADT’s partnership with Life360 and ADT’s own mobile app.” Id., Dkt.
`1, ¶¶ 46-52. AGIS, Inc.’s interactions with ADT disrupted Life360’s relationship with ADT and
`further pressured Life360 into settlement discussions with AGIS, Inc. Id. Based on these
`activities and others, the Northern District of California found sufficient minimum contacts
`existed in California, and the district court in the Northern District of California found personal
`jurisdiction over AGIS, Inc. Id., Dkt. 52 at 11.
`7. enforce the patents against California based companies through district court litigation and California local
`discovery.
`a. AGIS further sought discovery in California regarding Google’s confidential source code for
`Google Maps and Find My Device, both of which are accused functionalities in the EDTX
`matters. See HTC-EDTX matter, Dkt. 75 (lead consolidated case); see also Ex. 27, at 8-10.
`b. See also “How Life360 won its patent war,” by Joe Mullin, ArsTechnica (available at
`https://arstechnica.com/tech-policy/2015/03/how-life360-won-its-patent-war/) (indicating
`cease and desist letters sent to Google, Facebook, and Foursquare).
`c. See also all EDTX filings for Apple, Inc. and ZTE (TX), Inc.
`
`
`Other than the above, AGIS offers no other specific objections to ZTE’s Response citations. Rather, AGIS generally
`objects to the mere visual of redacted lines in the Response, because they allegedly “create[ ] an improper inference as
`to the existence” of evidence supporting personal jurisdiction in California. Strikingly, AGIS does not deny the
`Documents existence, nor does AGIS deny they support personal jurisdiction in California (and thus are relevant to this
`analysis). Instead, AGIS objects and argues that it is improper for the Northern District of California Court to view the
`Documents under seal—or even know they exist.
`
`This is an untenable position and further emphasizes AGIS’s flawed assertions regarding the scope of the Protective
`Order. According to AGIS, the mere mention of the existence of other documents is improper (irrespective of the
`content), thus effectively precluding any party other than AGIS—apparently even for rebuttal purposes—from stating
`that a document may exist and support personal jurisdiction. However, the redaction of the Documents herein was not
`an “improper use” under the Protective Order. AGIS is not free to declare that no factual or legal evidence exists
`supporting personal jurisdiction in California (thus concluding it was unreasonable to file the SAC), while simultaneously
`muzzling any indication to the contrary. If the Court approves jurisdictional discovery, then ZTE is entitled to pursue it. It
`is already known that information exists from the EDTX actions, and the mere reference to the existence of
`further/other information is entirely appropriate.
`
`ZTE agreed to withdraw the Documents, not the entire Response. ZTE did just that last night, March 11, 2019.
`
`Regards,
`
`Bradford
`
`
`Bradford Schulz, Ph.D.
`Attorney at Law
`Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
`11955 Freedom Drive, Reston, VA 20190-5675
`571.203.2739 | fax 202.408.4400 | bradford.schulz@finnegan.com | www.finnegan.com
`
`
`From: Hartman, Sarah G. <SHartman@brownrudnick.com>
`Sent: Monday, March 11, 2019 7:48 PM
`
`3
`
`

`

`Case 4:18-cv-06185-HSG Document 46-2 Filed 03/12/19 Page 5 of 12
`
`To: Schulz, Bradford <Bradford.Schulz@finnegan.com>
`Cc: Su, Michael <michael.liu.su@finnegan.com>; AGIS-Lit <agislit@brownrudnick.com>; Lambrianakos, Peter
`<PLambrianakos@brownrudnick.com>; Rubino, Vincent J. <VRubino@brownrudnick.com>; Sivakumar, Arjun
`<ASivakumar@brownrudnick.com>; Lavenue, Lionel <lionel.lavenue@finnegan.com>
`Subject: RE: ZTE (USA) Inc. v. AGIS Software Development LLC, et al. - Case. No. 4:18-cv-06185-HSG
`
`EXTERNAL Email:
`
`
`
`Counsel,
`
`
`Last Wednesday, we informed you that ZTE (USA), Inc.'s ("ZTE") use and filing of documents and information in support
`of its response to Defendant's Motion to Dismiss the Second Amended Complaint ("Response") in the instant action that
`was previously designated "CONFIDENTIAL" and/or "RESTRICTED-ATTORNEYS EYES ONLY" in the prior Texas Action
`violated the terms of the parties' Protective Order in the Texas Action, and requested that you immediately withdraw
`the Exhibits and "documents referencing any and all designated information." In response, you agreed to withdraw the
`designated exhibits and their "associated non-sealed documents." You provided us with a proposed Joint Stipulation to
`Remove Filed Documents ("Proposed Joint Stipulation") seeking to withdraw the designated Exhibits and sealed versions
`of the Response and Declaration. However, after reviewing the Proposed Joint Stipulation and publicly-filed versions of
`the Response and Declaration, we informed you that your proposal only partially rectifies ZTE's violation of the
`Protective Order, as the publicly-filed versions of the Response and Declaration still improperly include information
`citing to and relying on the designated Exhibits. I identified three examples of un-redacted sentences and/or parts of
`sentences in the Response that still cite to designated exhibits. This is improper. Further, as I previously stated, the
`Response brief contains numerous sentences, conclusions and arguments that rely on information contained in one or
`more of the improper exhibits, which are not redacted. For example, the list of activities on the bottom of page 13 of the
`Response, which are not redacted and do not include citations, reference information contained in Ex. 8, one of the
`designated exhibits that must be withdrawn. ZTE references this same information again on the page 23, without
`redaction or citation. Elsewhere in the Response, ZTE redacts this information, acknowledging that it should not be
`disclosed pursuant to the Protective Order. This is just one example of un-redacted statements in the Response that rely
`on information contained in the designated exhibits. Additionally, the fact that redactions are visible at all, and that
`citations to withdrawn exhibits are visible, creates an improper inference as to the existence of designated material that,
`pursuant to the terms of the Protective Order, is not to be used for any purpose other than in connection with the Texas
`Action.
`
`
`Accordingly, we requested that you file a Corrected Response that removes all references to the designated Exhibits and
`all information contained therein, without the use of redactions. Our request that ZTE file a Corrected Response is not a
`new request, as you contend, but rather is part of our initial request made nearly a week ago that all designated exhibits
`and information be withdrawn. ZTE's position that it will not file a Corrected Response that removes all references to
`and reliance on information contained in the designated Exhibits is improper and constitutes a continued violation of the
`Protective Order.
`
`
`Because the Proposed Joint Stipulation does not adequately rectify ZTE's violation of the parties' Protective Order, AGIS
`does not agree to its filing. Given ZTE's representation that it will file an Administrative Motion to Remove Filed
`Documents by 5:00PM (PST) today, AGIS Software's obligation to file a declaration in support of ZTE's sealing motion
`pursuant to Civil L.R. 79-5(e)(1)-(2) is moot. AGIS Software reserves all rights, including but not limited to the right to
`seek relief for ZTE's violation of the Protective Order, as well as judicial intervention compelling ZTE to withdraw its
`Response and Declaration in support thereof and file a Corrected Response.
`
`
`
`Sarah G. Hartman
`
`
`
`4
`
`

`

`Case 4:18-cv-06185-HSG Document 46-2 Filed 03/12/19 Page 6 of 12
`
`Counselor at Law
`
`Brown Rudnick LLP
`Seven Times Square
`New York, NY 10036
`T: 212-209-4823
`F: 212-938-2823
`shartman@brownrudnick.com
`www.brownrudnick.com
`Please consider the environment before printing this e-mail
`
`
`
`
`From: Schulz, Bradford [mailto:Bradford.Schulz@finnegan.com]
`Sent: Friday, March 08, 2019 11:43 PM
`To: Hartman, Sarah G.
`Cc: Su, Michael; AGIS-Lit; Lambrianakos, Peter; Rubino, Vincent J.; Sivakumar, Arjun; Lavenue, Lionel
`Subject: RE: ZTE (USA) Inc. v. AGIS Software Development LLC, et al. - Case. No. 4:18-cv-06185-HSG
`
`
`Sarah,
`
`
`We agreed to withdrawing the referenced designated Exhibits, but now it appears you are requesting something
`else. It is our understanding that AGIS is now requesting that ZTE seek Court approval to file an entirely new
`“Corrected Response.” However, ZTE will not refile a “Corrected Response to AGIS Software’s Motion to Dismiss
`the Second Amended Complaint that excludes any and all reference to any of the designated exhibits and/or any
`information contained therein, without the use of redactions.” ZTE will work to withdraw the referenced
`designated Exhibits through Local Rule 7-11, but this additional request is unreasonable, and ZTE will not do it.
`
`
`ZTE offered to withdraw the referenced designated Exhibits through Local Rule 7-11. The two options offered to
`AGIS are: (A) ZTE filing the Administrative Motion to Remove Filed Documents with a joint stipulation under Civil
`L.R. 7-12, or (B) ZTE filing the Administrative Motion to Remove Filed Documents with “a declaration that
`explains why a stipulation could not be obtained.” Please let us know which option AGIS elects, joint stipulation
`or with ZTE declaration, by Monday, March 11, 2019 5:00 PM (PST)—i.e. the due date for AGIS to file a
`declaration in support of ZTE’s sealing motion. See Civil L.R. 79-5(e)(1) & (2).
`
`
`Furthermore, the as-filed public versions of the Response Brief and Declaration appropriately redact the
`confidential information. It is unclear which citations, sentences, conclusions, and arguments you allege are
`improperly redacted. For instance, AGIS alleges that the two sentences citing to Ex. 8 on pages 6 and 10 are
`improperly redacted. But, the referenced sections (highlighted) do not contain confidential information:
`
`[on page 6]
`A year and half after losing the Life360-Florida case, AGIS, Inc. underwent a corporate restructuring on
`June 1, 2017. Ex. 19; see also Ex. 7, ¶ 7. AGIS Holdings and AGIS Software were formed such that AGIS,
`Inc. and AGIS Software became co-subsidiaries under AGIS Holdings. Id. Despite a change in name, all
`the principal actors remained the same. Compare Ex. 20 at 21, with Ex. 8, at 29.
`
`
`
`[on page 10]
`The remaining officers, Margaret Beyer (Corporate Secretary), Sandel Blackwell (President), and Ronald
`Wisneski (CFO/Treasure), all wear the same “hats” in both entities. Compare Ex. 20 at 21, with Ex. 8 at
`29.
`
`
`
`Here are several public sources confirming that Malcolm Beyer, Margaret Beyer, Sandel Blackwell, and Ronald
`Wisneski all have the same titles for AGIS Software, AGIS Holdings, and AGIS, Inc.:
`• https://www.corporationwiki.com/p/2ykegf/agis-holdings-inc
`• https://www.corporationwiki.com/Florida/Jupiter/advanced-ground-information-systems-inc-
`3905767.aspx
`• http://search.sunbiz.org/Inquiry/CorporationSearch/SearchResultDetail?inquirytype=OfficerRegistered
`AgentName&directionType=Initial&searchNameOrder=WISNESKIRONALDH%20P040000995499&aggreg
`
`5
`
`

`

`Case 4:18-cv-06185-HSG Document 46-2 Filed 03/12/19 Page 7 of 12
`
`ateId=domp-p04000099549-b00d4e06-db2d-4557-9f40-
`bc08b21327e9&searchTerm=Wisneski%20%20%20%20%20%20%20%20%20%20%20%20Ronald&listNa
`meOrder=WISNESKIRONALD%207563034
`• https://www.linkedin.com/in/sandel-blackwell-640baa4/
`• https://govtribe.com/vendors/advanced-ground-information-systems-inc-dot-35ft4
`• [compare with AGIS Software Initial Disclosures]
`
`
`
`AGIS also alleges that a portion of a sentence citing to Ex. 14 (on pg. 21) is improper. However, it is clear that the
`unredacted portion offers no additional information from the proceeding appropriate sentence: “Also, AGIS
`hired California-based firm Green Hills Software to promote, market, and test the patented technology, in
`California. Life360-California, Dkt. 52 at 6-7; Ex. 13. Additionally, AGIS hired California-based [redacted].” As
`such, the contested section (highlighted) did not require redaction.
`
`
`Other than the above sections, AGIS offers no other specific sentences, references, conclusions, or arguments
`potentially containing improperly redacted information. Without providing concrete specificity, your request
`and allegations are only adding delay and further amount to harassment.
`
`
`Regards,
`Bradford
`
`
`Bradford Schulz, Ph.D.
`Attorney at Law
`Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
`11955 Freedom Drive, Reston, VA 20190-5675
`571.203.2739 | fax 202.408.4400 | bradford.schulz@finnegan.com | www.finnegan.com
`
`
`
`From: Hartman, Sarah G. <SHartman@brownrudnick.com>
`Sent: Friday, March 8, 2019 4:22 PM
`To: Schulz, Bradford <Bradford.Schulz@finnegan.com>
`Cc: Su, Michael <michael.liu.su@finnegan.com>; AGIS-Lit <agislit@brownrudnick.com>; Lambrianakos, Peter
`<PLambrianakos@brownrudnick.com>; Rubino, Vincent J. <VRubino@brownrudnick.com>; Sivakumar, Arjun
`<ASivakumar@brownrudnick.com>; Lavenue, Lionel <lionel.lavenue@finnegan.com>
`Subject: RE: ZTE (USA) Inc. v. AGIS Software Development LLC, et al. - Case. No. 4:18-cv-06185-HSG
`Importance: High
`
`
`EXTERNAL Email:
`
`
`
`
`Counsel,
`
`
`We have reviewed your proposed motion and stipulation to withdraw the documents and information
`designated "RESTRICTED-ATTORNEYS EYES ONLY" from ZTE's Response brief. The motion and stipulation ask the
`Court to withdraw the improper exhibits and the sealed versions of the Response brief and Declaration, which
`leave the publicly-filed versions of the Response brief and Declaration for review and reply. We have considered
`your proposal, but after reviewing the redacted versions of the Response brief and the Declaration it has come
`to our attention that only some of the information citing to and/or relying on the improper exhibits are
`redacted. For example, at least 2 sentences citing to Ex. 8 (on pages 6 and 10), and a portion of a sentence citing
`to Ex. 14 (on p. 21), are not redacted in the publicly-filed version of the Response brief. Also, all citations to the
`improper exhibits are visible. The Response brief also contains numerous sentences, conclusions and arguments
`that rely on information contained in one or more of the improper exhibits, which are not redacted.
`
`
`6
`
`

`

`Case 4:18-cv-06185-HSG Document 46-2 Filed 03/12/19 Page 8 of 12
`
`Accordingly, AGIS Software requests that ZTE refile, with approval from the Court, a Corrected Response to AGIS
`Software's Motion to Dismiss the Second Amended Complaint that excludes any and all reference to any of the
`designated exhibits and/or any information contained therein, without the use of redactions. In so doing, AGIS
`Software requests that ZTE also seek approval to treat the Corrected Response as if it was the only response for
`purposes of calculating the deadline for AGIS's reply.
`
`
`
`Thanks,
`Sarah
`
`
`
`
`Sarah G. Hartman
`Counselor at Law
`
`Brown Rudnick LLP
`Seven Times Square
`New York, NY 10036
`T: 212-209-4823
`F: 212-938-2823
`shartman@brownrudnick.com
`www.brownrudnick.com
`Please consider the environment before printing this e-mail
`
`
`
`
`From: Schulz, Bradford [mailto:Bradford.Schulz@finnegan.com]
`Sent: Thursday, March 07, 2019 7:22 PM
`To: Hartman, Sarah G.
`Cc: Su, Michael; AGIS-Lit; Lambrianakos, Peter; Rubino, Vincent J.; Sivakumar, Arjun; Lavenue, Lionel
`Subject: RE: ZTE (USA) Inc. v. AGIS Software Development LLC, et al. - Case. No. 4:18-cv-06185-HSG
`
`
`External E-mail. Use caution accessing links or attachments.
`
`Sarah,
`
`
`As indicated last night, March 6, 2019, ZTE is working to withdraw the referenced designated Exhibits.
`After discussions with the Northern District of California court clerk, it is our understanding that a
`Motion for Administrative Relief requesting the removal of the sealed documents from the case file and
`docket is sufficient to withdraw the documents.
`
`
`Further, per Local Rule 7-11, we further understand that the Motion “must be accompanied by a
`proposed order and by either a stipulation under Civil L.R. 7-12 or by a declaration that explains why a
`stipulation could not be obtained.”
`
`
`So we may file this soon, please let us know if AGIS consents to the attached stipulation. For your
`convenience, copies of the Motion and Proposed Order are also attached.
`
`
`Regards,
`Bradford
`
`
`Bradford Schulz, Ph.D.
`Attorney at Law
`Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
`11955 Freedom Drive, Reston, VA 20190-5675
`571.203.2739 | fax 202.408.4400 | bradford.schulz@finnegan.com | www.finnegan.com
`
`
`
`From: Lavenue, Lionel <lionel.lavenue@finnegan.com>
`Sent: Wednesday, March 6, 2019 7:40 PM
`
`7
`
`

`

`Case 4:18-cv-06185-HSG Document 46-2 Filed 03/12/19 Page 9 of 12
`
`To: Hartman, Sarah G. <SHartman@brownrudnick.com>
`Cc: Schulz, Bradford <Bradford.Schulz@finnegan.com>; Su, Michael <michael.liu.su@finnegan.com>;
`AGIS-Lit <agislit@brownrudnick.com>; Lambrianakos, Peter <PLambrianakos@brownrudnick.com>;
`Rubino, Vincent J. <VRubino@brownrudnick.com>; Sivakumar, Arjun <ASivakumar@brownrudnick.com>
`Subject: RE: ZTE (USA) Inc. v. AGIS Software Development LLC, et al. - Case. No. 4:18-cv-06185-HSG
`
`
`Sarah,
`
`
`Our understanding of the Protective Order is different, and we disagree with your assessment. See AGIS
`Software Development, LLC v. Huawei Device USA Inc., et al, Case No. 2:17-cv-00513 (Lead Case), Dkt.
`119.
`
`
`Your understanding of undefined terms in the PO, such as “this Action” and “the Court,” are different
`from ours and may be the root of this dispute. For instance, not once does the PO limit “this Action” as
`you suggest, let alone to define it to mean your “Texas Action” only interpretation. See Dkt. 119 ¶ 13
`("Documents, information or material produced pursuant to any discovery request in this Action,
`including but not limited to Protected Material designated as DESIGNATED MATERIAL, shall be used by
`the Parties only in the litigation of this Action and shall not be used for any other purpose. Any person
`or entity who obtains access to DESIGNATED MATERIAL or the contents thereof pursuant to this Order
`shall not make any copies, duplicates, extracts, summaries or descriptions of such DESIGNATED
`MATERIAL or any portion thereof except as may be reasonably necessary in the litigation of this
`Action.") (emphasis added). And the PO likewise fails to so limit “the Court,” and, indeed, the NDCA
`court is certainly authorized to view the designated material under Dkt. 119 ¶v 11(i) and 15.
`
`
`Additionally, ZTE expressly entered into the PO “subject to their motion to dismiss, or in the alternative
`transfer” (see footnote 2, of the Protective Order), as you are aware, Judge Gilstrap transferred the case
`to NDCA - also part of the Action. The PO also fails to limit “this Action” as you note, so it is unclear
`whether dismissal without prejudice followed by a declaratory judgment “terminates” “this Action,”
`thus prompting the termination clause under ¶ 33.
`
`
`Also, we note that neither party, ZTE or AGIS, conducted the sixty (60) day election under Dkt. 119 ¶ 33.
`Neither AGIS or ZTE notified the other of their desired election for handling the designated material.
`This further connotes that the parties mutually understood that “this Action” was not terminated.
`
`
`Of course, the NDCA court should consider these documents in the jurisdictional analysis, but AGIS will
`now delay that access. Still, there are more than sufficient facts in ZTE Response to the Motion to
`Dismiss, Dkt. 42, without the sealed exhibits, to show jurisdiction or to obtain jurisdictional discovery. In
`fact, jurisdictional discovery was already ordered for AGIS with less. See Life360, Inc. v. Advanced
`Ground Info. Sys., Inc., No. 5:15-cv-00151-BLF, Dkt. 52 at 5 (N.D. Cal. Jan. 12, 2015). If the Court does not
`outright deny AGIS’s Motion to Dismiss, then it is likely to order jurisdictional discovery—where these
`documents and others like them will be discovered.
`
`
`Nevertheless, given your objection, we will withdraw the following exhibits at issue and their associated
`non-sealed documents:
`
`
`• Ex. 3
`• Ex. 4
`• Ex. 5
`• Ex. 6
`• Ex. 8
`• Ex. 10
`• Ex. 14
`
`8
`
`

`

`Case 4:18-cv-06185-HSG Document 46-2 Filed 03/12/19 Page 10 of 12
`
`• Ex. 34
`
`
`
`
`And as requested, ZTE will work to withdraw the referenced designated Exhibits.
`
`
`Finally, we understand now that AGIS specifically elects to seek destruction under Dkt. 119 ¶ 33 of the
`designated material, and as such, we will destroy the material within 7 days.
`
`
`Regards,
`
`
`Lionel
`
`
`
`From: Hartman, Sarah G. [mailto:SHartman@brownrudnick.com]
`Sent: Wednesday, March 6, 2019 4:25 PM
`To: Lavenue, Lionel <lionel.lavenue@finnegan.com>
`Cc: Schulz, Bradford <Bradford.Schulz@finnegan.com>; Su, Michael <michael.liu.su@finnegan.com>;
`AGIS-Lit <agislit@brownrudnick.com>; Lambrianakos, Peter <PLambrianakos@brownrudnick.com>;
`Rubino, Vincent J. <VRubino@brownrudnick.com>; Sivakumar, Arjun <ASivakumar@brownrudnick.com>
`Subject: ZTE (USA) Inc. v. AGIS Software Development LLC, et al. - Case. No. 4:18-cv-06185-HSG
`Importance: High
`
`
`EXTERNAL Email:
`
`
`
`
`Counsel,
`
`
`We are in receipt of ZTE (USA), Inc.'s ("ZTE") Response to Defendant's Motion to Dismiss the Second
`Amended Complaint and accompanying exhibits, including those filed under seal. ZTE's use and filing of
`documents and information in the ND Cal Action (ZTE (USA) Inc. v. AGIS Software Development LLC, Case
`No. 4:18-cv-06185) that were designated "CONFIDENTIAL" and/or "RESTRICTED-ATTORNEYS EYES ONLY"
`in the prior Texas Action (AGIS Software Development, LLC v. ZTE Corp., et al., Case No. 2:17-cv-00517
`(E.D. Tex.) (Consolidated Case)), violates the terms of the parties' Protective Order in the Texas
`Action. See AGIS Software Development, LLC v. Huawei Device USA Inc., et al, Case No. 2:17-cv-00513
`(Lead Case), Dkt. 119. The violations include the filing of at least the following Exhibits (filed in
`connection with ZTE's Response to Defendant's Motion to Dismiss Second Amended Complaint) and
`other documents referencing any and all designated information:
`
`
`• Ex. 3
`• Ex. 4
`• Ex. 5
`• Ex. 6
`• Ex. 8
`• Ex. 10
`• Ex. 14
`• Ex. 34
`• ZTE’s Response to Defendant's Motion to Dismiss Second Amended Complaint; Memorandum
`of Points and Authorities in Support (all portions referencing and/or relying on any and all
`information designated under the Protective Order, including but not limited to the redacted
`portions)
`
`9
`
`

`

`Case 4:18-cv-06185-HSG Document 46-2 Filed 03/12/19 Page 11 of 12
`
`• Declaration of Bradford C. Schulz in Support of ZTE’s Response (all portions referencing and/or
`relying on any and all information designated under the Protective Order, including but not
`limited to the redacted portions)
`
`
`
`As ZTE admits (see ND Cal Action, Dkt. 42), all of the foregoing Exhibits and information were designated
`"RESTRICTED-ATTORNEYS EYES ONLY" under the terms of the parties' Protective Order. Pursuant to the
`terms of that Order, such designated information is permitted to be used by the parties to the Texas
`Action only in connection with the Texas Action, and not for any other purpose. See, e.g., Dkt. 119 ¶ 13
`("Documents, information or material produced pursuant to any discovery request in [the Texas Action],
`including but not limited to Protected Material designated as DESIGNATED MATERIAL [including material
`designated as "CONFIDENTIAL" and/or "RESTRICTED-ATTORNEYS EYES ONLY"], shall be used by the
`Parties only in the litigation of [the Texas Action] and shall not be used for any other purpose. Any
`person or entity who obtains access to DESIGNATED MATERIAL or the contents thereof pursuant to this
`Order shall not make any copies, duplicates, extracts, summaries or descriptions of such DESIGNATED
`MATERIAL or any portion thereof except as may be reasonably necessary in the litigation of [the Texas
`Action].") (emphasis added).
`
`
`Addit