Case 5:18-md-02834-BLF Document 608-2 Filed 06/18/20 Page 1 of 3
`Case 5:18-md-02834—BLF Document 608-2 Filed 06/18/20 Page 1 of 3
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`EXHIBIT 1
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`EXHIBIT 1
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`Case 5:18-md-02834-BLF Document 608-2 Filed 06/18/20 Page 2 of 3
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`From:(cid:3)Roderick(cid:3)G.(cid:3)Dorman(cid:3)<RDorman@McKoolSmithHennigan.com>(cid:3)(cid:3)
`Sent:(cid:3)22(cid:3)May(cid:3)2014(cid:3)14:56(cid:3)
`To:(cid:3)Murray(cid:3)Markiles,(cid:3)SAM(cid:3)<mmarkiles@stubbsalderton.com>;(cid:3)Kevin(cid:3)Bermeister(cid:3)<kb@pweb.com>(cid:3)
`Cc:(cid:3)Lawrence(cid:3)Hadley(cid:3)<LHadley@McKoolSmithHennigan.com>;(cid:3)Jeanne(cid:3)E.(cid:3)Irving(cid:3)
`<JIrving@McKoolSmithHennigan.com>;(cid:3)Jim(cid:3)Bergman(cid:3)<JBergman@McKoolSmithHennigan.com>(cid:3)
`Subject:(cid:3)FW:(cid:3)Res(cid:3)Judicata(cid:3)
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`(cid:3)S
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`hould we try to do the following in the following order:
`1. We ask for $1 million in return for a dismissal with prejudice. (No
`license)
`2. We ask for $1 million in return for a dismissal with prejudice and a
`paid up license to the PersonalWeb portfolio for the field of use of
`multi-code uploads and conditional gets.
`3. We ask for a dismissal without prejudice, with a covenant not to sue
`for 24 months and a tolling agreement.
`4. We ask for a dismissal with prejudice, each side to bear their won
`fees and costs.
`
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`The effect of a dismissal with prejudice will only cause us to lose damages
`for the period up to, but not beyond, the date we filed our complaint. I am
`advised that about 80% of our damages is post filing, and the infringement
`is ramping up as time passes. These claims will be worth more over
`time. The law follows detailing the limited amount we lose by dismissing
`with prejudice.:
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`Any act of infringement occurring after the filing of complaint is not
`precluded by res judicata and can be asserted in a later proceeding. The
`exception is if the plaintiff specifically elected to include such acts in the
`case by supplementing their complaint to include such acts. There is no
`requirement that the plaintiff do so, though, and we have not done so in our
`case.
`
`This is the discussion in the Aspex case from the Federal Circuit:
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`In patent cases, this court has applied the general rule that res
`judicata does not bar the assertion of "new rights acquired during the
`action which might have been, but were not, litigated." Gillig v. Nike,
`Inc., 602 F.3d 1354, 1363 (Fed. Cir. 2010), quoting Computer
`Assocs. Int'l, Inc. v. Altai, Inc., 126 F.3d 365, 370 (2d Cir. 1997); see
`also Manning v. City of Auburn, 953 F.2d 1355, 1360 (11th Cir. 1992)
`("for res judicata purposes, claims that 'could have been brought' are
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`Case 5:18-md-02834-BLF Document 608-2 Filed 06/18/20 Page 3 of 3
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`claims in existence at the time the original complaint is filed or claims
`actually asserted by supplemental pleadings or otherwise in the
`earlier action"). While a party may seek to pursue claims that accrue
`during the pendency of a lawsuit adjudicated in that lawsuit, the party
`is not required to do so, and res judicata will not be applied to such
`accruing claims if the party elects not to have them included in the
`action. Gillig, 602 F.3d at 1363; In re Piper Aircraft Corp., 244 F.3d
`1289, 1298 (11th Cir. 2001); Curtis v. Citibank, N.A., 226 F.3d 133,
`139 (2d Cir. 2000).
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`ASPEX EYEWEAR, INC., AND CONTOUR OPTIK, INC. v. MARCHON
`EYEWEAR, INC., 672 F.3d 1335, 1345 (Fed. Cir. 2012).
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`(cid:3)I
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`(cid:3)
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`mportantly, if we do the dismissal with prejudice we MUST do so before
`we serve an expert damage report that seeks damages during the
`pendency of the action. Otherwise Amazon in a subsequent suit will argue
`that, by doing so, we were “otherwise [than by supplemental pleading]
`asserting such claims in the earlier action.”
`
`Kevin, when can Murray, Larry and I speak with you tomorrow to get this
`case concluded?
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`