`Case 5:l5—cv—O2008—EJD Document 91-5 Filed 04/27/16 Page 1 of 5
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`EXHIBIT 4
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`EXHIBIT 4
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`REDACTED VERSION OF ENTIRE
`DOCUMENT FOR PUBLIC FILING
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`REDACTED VERSION OF ENTIRE
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`DOCUMENT FOR PUBLIC FILING
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`Case 5:15-cv-02008-EJD Document 91-5 Filed 04/27/16 Page 2 of 5
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`Niemeyer, Elizabeth
`
`From:
`Sent:
`To:
`Cc:
`Subject:
`
`Niemeyer, Elizabeth
`Tuesday, April 05, 2016 5:01 PM
`Rowland, Clarence; OpenTV-Apple-2008
`#Apple OpenTV Team; Yagura, Ryan K.; Drummond Hansen, Melody; Simmons, Luann
`RE: OpenTV v. Apple, Case No. 15-2008 - Meet and confer
`
`Dear Clarence,
`
`
`Thank you for your message. We have no conflict with a September 15 hearing date. We are still investigating whether
`the proposed exhibits may be filed publicly—we understand that Apple will file the papers under seal if it does not
`receive a response before filing its paper. Regarding Apple’s motion, as noted during our call, since OpenTV has not
`sought leave to amend its Patent L.R. 3‐2 production, we consider Apple’s motion as to the ‘740 and ‘169 patents
`premature. As also noted, we would be surprised if Apple can claim it was unaware of the ‘736 invention disclosure,
`which was submitted during the prosecution of the ‘736 patent and served with OpenTV’s Patent L.R. 3‐2 production.
`We will, however, address whatever arguments Apple makes in its motion.
`
`
`Sincerely,
`Elizabeth
`
`
`Elizabeth A. Niemeyer│Attorney at Law│Finnegan, Henderson, Farabow, Garrett & Dunner, LLP │901 New York Avenue, NW, Washington, DC
`20001-4413 │(202) 408-4238│fax (202) 408-4400│elizabeth.niemeyer@finnegan.com
`
`NOTICE: This e-mail was sent by a law firm and may contain information that is confidential, protected, or privileged. If you are not the intended
`recipient, please delete the e-mail and all attachments, and notify the sender immediately.
`
`
`From: Rowland, Clarence [mailto:crowland@omm.com]
`Sent: Monday, April 04, 2016 2:17 PM
`To: Niemeyer, Elizabeth; OpenTV-Apple-2008
`Cc: #Apple OpenTV Team; Yagura, Ryan K.; Drummond Hansen, Melody; Simmons, Luann
`Subject: RE: OpenTV v. Apple, Case No. 15-2008 - Meet and confer
`
`Dear Elizabeth,
`
`Thank you for meeting and conferring with us on Thursday.
`
`As we discussed, Apple’s intends to move to strike all qualifying language (e.g., “at least as early as”) in OpenTV’s Rule 3‐
`1(f) and 3‐2(b) disclosures and to preclude OpenTV from relying on conception and reduction to practice dates, and
`supporting documentation, other than what was specifically identified in its October 15, 2015 Patent L.R. 3‐1(f) and 3‐
`2(b) disclosures.
`
`We understand that OpenTV will oppose Apple’s motion. We understand that you are not aware of an OpenTV conflict
`with a September 15, 2016 hearing date, but you planned to check with other members of your team to confirm. If we
`do not hear from you by the end of the day tomorrow (Tuesday) about a conflict with September 15, we will assume the
`date is acceptable.
`
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`1
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`Case 5:15-cv-02008-EJD Document 91-5 Filed 04/27/16 Page 3 of 5
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`We understand that you are still investigating whether OpenTV will agree that Apple may file redacted exhibits, rather
`than filing a motion to seal that would require OpenTV to file a supporting declaration. Please let us know by the end of
`the day tomorrow (Tuesday) whether OpenTV agrees that Apple may file the excerpted exhibits as public versions.
`
`To summarize the points we discussed on our call, Apple disagrees with OpenTV’s assertion that Patent L.R. 3‐1(f) does
`not require disclosure of conception dates. OpenTV did not identify any earlier conception date for the ’740 Patent or
`the ’736 Patent in its Patent L.R. 3‐1(f) disclosure, and we understand that OpenTV still has not decided whether it will
`assert an earlier date for the ’740 Patent.
`
`We also disagree with your assertion that OpenTV complied with Patent L.R. 3‐2(b). Patent L.R. 3‐2(b) required OpenTV
`to produce “all documents evidencing the conception, reduction to practice, design, and development of each claimed
`invention, which were created on or before the date of application for the patent‐in‐suit or the priority date identified
`pursuant to Patent L.R. 3‐1(f), whichever is earlier” and L.R. 3‐2 required OpenTV to identify by production number the
`documents belonging to category 3‐2(b). OpenTV has suggested it may rely on a June 2001 conception date for the ’169
`Patent and an
`conception date for the ’740 Patent. On our call, you confirmed that OpenTV has produced
`no documents to support either date, OpenTV has not yet decided whether it will waive privilege to the June 2001
`document to support the earlier conception date for the ’169 Patent, and OpenTV has not yet identified documents
`supporting an earlier conception date for the ’740 Patent.
`
`Also, on February 26, OpenTV suggested for the first time that it may assert a September 14, 1995 conception date for
`the ’736 Patent based on a publicly available document in the ’736 Patent file history. But OpenTV’s Patent L.R. 3‐1(f)
`disclosure did not identify the September 14, 1995 date, and OpenTV’s Patent L.R. 3‐2(b) disclosure did not identify the
`file history as the supporting documentation for the a conception date. Instead, OpenTV identified the file history
`simply as a file history under Patent L.R. 3‐2(c).
`
`If we have misunderstood any of OpenTV’s positions, please let us know.
`
`Sincerely,
`
`Clarence
`
`Clarence Rowland
`O'Melveny & Myers LLP
`400 S. Hope St.
`Los Angeles, CA, 90017
`(213) 430-7245
`CRowland@omm.com
`
`This message and any attached documents contain information from the law firm of O'Melveny & Myers LLP that may be confidential
`and/or privileged. If you are not the intended recipient, you may not read, copy, distribute, or use this information. If you have
`received this transmission in error, please notify the sender immediately by reply e-mail and then delete this message.
`
`From: Niemeyer, Elizabeth [mailto:Elizabeth.Niemeyer@finnegan.com]
`Sent: Wednesday, March 30, 2016 1:39 PM
`To: Rowland, Clarence; OpenTV-Apple-2008
`Cc: #Apple OpenTV Team; Yagura, Ryan K.; Drummond Hansen, Melody; Simmons, Luann
`Subject: RE: OpenTV v. Apple, Case No. 15-2008 - Meet and confer
`
`Dear Clarence,
`
`
`Thank you for your message. Let’s talk tomorrow (3/31) at 4:30 p.m. ET.
`
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`Case 5:15-cv-02008-EJD Document 91-5 Filed 04/27/16 Page 4 of 5
`
`During our call, please let us know what Apple is proposing to move to strike and the basis for any such motion. As set
`forth in the Patent Local Rules and as the parties briefed in Apple I, Patent L.R. 3‐1(f) does not require OpenTV to
`disclose “conception dates” as part of its infringement contentions, only “priority dates.” Patent L.R. 3‐1(f) (“For any
`patent that claims priority to an earlier application, the priority date to which each asserted claim allegedly is entitled.”)
`OpenTV has not changed any of its priority dates from the dates first identified in its infringement contentions. Patent
`Local Rule 3‐2(b) required OpenTV to produce documents that evidence a conception date earlier than the priority date,
`which we did. OpenTV has not sought to supplement its production, but if we determine it is appropriate to supplement
`OpenTV’s production, as we previously informed you, we will seek leave to do so.
`
`
`Regarding the documents attached to your email, we are reviewing them and will let you know our position as soon as
`possible on filing them under seal.
`
`
`Sincerely,
`Elizabeth
`Elizabeth A. Niemeyer│Attorney at Law│Finnegan, Henderson, Farabow, Garrett & Dunner, LLP │901 New York Avenue, NW, Washington, DC
`20001-4413 │(202) 408-4238│fax (202) 408-4400│elizabeth.niemeyer@finnegan.com
`NOTICE: This e-mail was sent by a law firm and may contain information that is confidential, protected, or privileged. If you are not the intended
`recipient, please delete the e-mail and all attachments, and notify the sender immediately.
`
`
`From: Rowland, Clarence [mailto:crowland@omm.com]
`Sent: Tuesday, March 29, 2016 9:41 PM
`To: Niemeyer, Elizabeth; OpenTV-Apple-2008
`Cc: #Apple OpenTV Team; Yagura, Ryan K.; Drummond Hansen, Melody; Simmons, Luann
`Subject: OpenTV v. Apple, Case No. 15-2008 - Meet and confer
`
`
`Dear Elizabeth,
`
`
`On Friday, April 1, 2016, or soon thereafter, Apple intends to file a motion to preclude OpenTV from relying on
`conception dates other than those identified in its October 15, 2015 Patent L.R. 3‐1(f) disclosure and to strike language
`to the contrary in OpenTV’s disclosures and discovery responses. We would like to have a meet and confer to
`discuss. We are generally available tomorrow before 12:30 p.m. and after 2:00 p.m., on Thursday after 1:30 p.m., and
`on Friday after 4:00 p.m. (all times Pacific).
`
`
`We intend to attach to the motion several exhibits that are documents that OpenTV has marked Attorneys’ Eyes
`Only. We have removed significant portions of the exhibits that are irrelevant to the motion, and we suspect you may
`not want to file the remaining portions under seal. Please let us know if we can file all of the attached exhibits
`publicly. If you would like these exhibits sealed, then please let us know which exhibits you would like filed under seal
`and we will file them under seal, and you will need to file a supporting declaration under N.D. Cal. L.R. 79‐5(e). If we do
`not hear back from you on this issue by Friday, then we will proceed with filing under seal the exhibits that you have
`marked AEO.
`
`
`Thank you,
`
`
`Clarence
`
`
`Clarence Rowland
`O'Melveny & Myers LLP
`400 S. Hope St.
`Los Angeles, CA, 90017
`(213) 430-7245
`CRowland@omm.com
`
`This message and any attached documents contain information from the law firm of O'Melveny & Myers LLP that may be confidential
`
`3
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`Case 5:15-cv-02008-EJD Document 91-5 Filed 04/27/16 Page 5 of 5
`and/or privileged. If you are not the intended recipient, you may not read, copy, distribute, or use this information. If you have
`received this transmission in error, please notify the sender immediately by reply e-mail and then delete this message.
`
`
`
`
`This e-mail message is intended only for individual(s) to whom it is addressed and may contain information that is privileged, confidential, proprietary, or otherwise
`exempt from disclosure under applicable law. If you believe you have received this message in error, please advise the sender by return e-mail and delete it from
`your mailbox. Thank you.
`
`4