Case 1:16-cv-00290-MN Document 146-1 Filed 12/05/18 Page 1 of 85 PageID #: 4790
`
`From:
`Sent:
`To:
`Cc:
`
`Subject:
`
`Attachments:
`
`Sam,
`
`Carlson, Erik <ecarlson@wsgr.com>
`Thursday, November 29, 2018 5:43 PM
`Sam Joyner
`Chiji Offor; WSGR - OVT/IP Bridge; Moore, David E.; Palapura, Bindu A.;
`TeamIPB_Omni_DE_290; Stamatios Stamoulis; Villarreal, Jose
`[EXT] RE: Godo Kaisha IP Bridge 1 v. OmniVision Technologies, Inc. (C.A. No. 16-290-
`MN)
`2018-11-05 Email from J. Villarreal re Deposition Notice.pdf; 2018-11-06 1st Email from
`L. Zang.pdf; 2018-11-06 2nd Email from L. Zang.pdf; 2018-11-06 Email from J.
`Villarreal.pdf; 2018-11-07 Email from E. Carlson.pdf; 2018-11-08 Email from L. Zang.pdf;
`2018-11-09 Email from E. Carlson.pdf; 2018-11-27 Email from E. Carlson.pdf;
`2018-10-16 Email from E. Carlson.pdf; 2018-11-02 Email from J. Villarreal.pdf;
`2018-11-05 Email from J. Villarreal re '677 contentions.pdf
`
`Thank you for your email and the opportunity for us to correct the record. Each of the five issues in our letter
`have been pending for quite some time and the parties’ discussed each of them on the November 9, 2018
`meet and confer. We have exchanged written correspondence regarding each issue as well. Godo has failed to
`resolve the issues despite a meet and confer and ample opportunity to do so. Therefore, they are ripe for
`resolution by the Court. If Godo adequately addresses one or more of the five items in our letter before the
`December 3 teleconference, we will withdraw that issue.
`
`1. 677 Contentions. With regard to the first issue, Godo admitted it needed to correct various things in its ’677
`patent infringement contentions nearly a month ago at the claim construction hearing. On November 5, 2018,
`OmniVision counsel sent the attached email asking for updated contentions by November 12. Godo did not
`update by November 12 or respond to that email. On November 6, OmniVision counsel sent the attached
`email asking to discuss a motion to strike Godo’s contentions on a meet and confer. On the November 9, 2018
`meet and confer, the parties addressed this issue and OmniVision’s counsel explained that if Godo only
`removed the words “average density” and left the analysis unchanged that it would be insufficient.
`OmniVision confirmed that the contentions were discussed and indicated it would raise the issue with the
`Court in the attached November 9 email. On November 16, the Friday before the week of the Thanksgiving
`Holiday, Godo served amended contentions that were insufficient for the very reason that OmniVision had
`warned about on the meet and confer. On November 27, the Tuesday after the Thanksgiving holiday,
`OmniVision counsel sent the attached email explaining again why the issue was still ripe for Court resolution
`and offering “to discuss any of the outstanding issues by phone with an aim of reducing and narrowing the
`disputes presented to the Court at the December 3 teleconference.” Godo never responded.
`
`2. Interrogatory No. 8. The history of this issue stretches back even further than the first. The deficiency was
`first discussed on the parties mid-October meet and confer and confirmed in the attached November 7 email
`from OmniVision counsel. On that first meet and confer, OmniVision told Godo that the Interrogatory required
`Godo to identify dates for conception and reduction to practice and that Godo had failed to do so. Godo
`committed to supplement by November 6. Godo failed to supplement by November 6 or provide any update
`by then as to when OmniVision should expect a supplement. As also shown in the attached November 7 email,
`OmniVision asked to discuss this issue on the parties next meet and confer, the one that occurred on
`November 9. On the November 9 meet and confer, OmniVision again asked for Godo to identify dates. The
`1
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`

`

`Case 1:16-cv-00290-MN Document 146-1 Filed 12/05/18 Page 2 of 85 PageID #: 4791
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`attached November 9 email from OmniVision counsel confirms that parties discussed this interrogatory. On
`November 16 Godo served a supplemental response that was still deficient for the very same reason the
`parties had discussed multiple times. On November 27, OmniVision counsel sent the attached email
`confirming the continued deficiency.
`
`3. Interrogatory No. 14. The history of this issue mirrors that of the above interrogatory. As shown in the
`attached emails, it was discussed on two meet and confers, where OmniVision explained that Godo had failed
`to provide a complete response including the additional information OmniVision now asks the Court to compel
`Godo to provide. The discussions were confirmed in multiple emails.
`
`4. Lack of reasonable notice of 3rd party depositions. OmniVision raised Godo’s lack of reasonable notice the
`same day OmniVision learned of it in the attached November 2, 2018 email from OmniVision counsel.
`OmniVision sent at least the four additional attached emails in early November regarding the lack of
`reasonable notice. A November 6, 2018 email from OmniVision counsel, lists this issue as a topic for the
`November 9, 2018 meet and confer. On that meet and confer OmniVision counsel asked for a list of 3rd party
`subpoenas and thought that Godo agreed to provide a list and updates as to deposition dates. This was
`confirmed in the attached November 9, 2018 email from OmniVision counsel. Godo’s counsel responded that
`no agreement had been reached and no list would be provided because Godo took the position it had
`provided reasonable notice. Thus, OmniVision’s counsel confirmed the dispute in the attached November 27,
`2018 email.
`
`5. English translations of documents responsive to Interrogatory 15. As shown in the attached October 16,
`2018 email, this issue was discussed on the mid-October meet and confer. As shown in the attached
`November 9 email, the parties again discussed this issue on the November 9 meet and confer and specifically
`informed Godo that “WSGR review suggests that the earlier-cited documents are responsive to ROG 15.”
`Godo said it would evaluate but never provided a supplemental response, translation, or even an update as to
`Godo’s evaluation. This dispute was confirmed in the attached November 27, 2018 email from counsel.
`
`We understand that when the parties called chambers, no specific issues were discussed/enumerated by
`either side, but each side indicated they would raise have their own disputes. As the above shows, each of the
`five issues was the subject of at least one meet and confer and emails both before and after the meet and
`confer. OmniVision has provided Godo ample opportunity to cure these deficiencies and Godo has allowed
`them to linger late into discovery.
`
`Regards,
`Erik
`
`Erik J. Carlson • Wilson Sonsini Goodrich & Rosati
`633 West Fifth Street, Suite 1550 • Los Angeles, CA 90071 • 323.210.2940 • ecarlson@wsgr.com
`
`From: Sam Joyner [mailto:sjoyner@ShoreChan.com]
`Sent: Thursday, November 29, 2018 8:42 AM
`To: Villarreal, Jose
`Cc: Chiji Offor; WSGR - OVT/IP Bridge; David Ellis Moore; Bindu Palapura; TeamIPB_Omni_DE_290; Stamatios Stamoulis
`Subject: FW: Godo Kaisha IP Bridge 1 v. OmniVision Technologies, Inc. (C.A. No. 16-290-MN)
`
`Jose,
`
`2
`
`

`

`Case 1:16-cv-00290-MN Document 146-1 Filed 12/05/18 Page 3 of 85 PageID #: 4792
`
`We were surprised to receive OmniVision’s letter brief yesterday evening, moving the Court to:
`1. strike IP Bridge’s amended infringement contentions regarding the ’677 patent;
`2. strike portions of IP Bridge’s supplemental response to Interrogatory No. 8;
`3. compel IP Bridge to provide a more “fulsome response” to its supplemental response to
`Interrogatory No. 14;
`4. compel IP Bridge “to provide a list of the third parties to whom it had directed a subpoena,
`provide an update as to dates that have been proposed for the deposition, and keep
`OmniVision informed of dates as they are finalized”; and
`5. compel IP Bridge to provide English translations of Japanese documents cited in its original
`response to Interrogatory No. 15, but not cited in its amended response.
`
`When local counsel called the Court’s chambers to schedule a teleconference regarding IP Bridge’s issues
`with OmniVision’s discovery responses, no one from OmniVision on the called mentioned the above
`issues. To date, the parties have not met and conferred about [1] IP Bridge’s amended infringement
`contentions, [2] IP Bridge’s supplemental response to Interrogatory No. 8, or [3] IP Bridge’s supplemental
`response to Interrogatory No. 14—because OmniVision has never requested such a conference. And we
`disagree with OmniVision’s belief that it has satisfied Judge Noreika’s meet and confer obligation
`regarding the last two issues [4, 5] before seeking relief from the Court at the December 3, 2018
`teleconference. For the foregoing reasons, we ask that OmniVision immediately withdraw its letter brief in
`its entirety so that the parties may confer properly. Alternatively, OmniVision must immediately inform
`the Court that it is withdrawing the first three issues raised in its letter brief. If OmniVision refuses to do
`either, IP Bridge will move the Court to strike OmniVision’s letter brief in whole or in part.
`
`Thank you,
`Sam
`
`Samuel E. Joyner
`Partner
`
`D 214.593.9124 / C 214.923.1543 / F 214.593.9111
`SJoyner@ShoreChan.com / ShoreChan.com
`
`Shore Chan DePumpo LLP
`901 Main Street / Suite 3300 / Dallas, Texas 75202
`
`NOTICE OF CONFIDENTIALITY:
`The information contained in and transmitted with this e-mail may be subject to the Attorney-Client and Attorney Work Product privileges, and is
`Confidential. It is intended only for the individuals or entities designated as recipients above. You are hereby notified that any dissemination, distribution,
`copying, use or reliance upon the information contained in and transmitted with this e-mail by or to anyone other than the addressee designated above by the
`sender is unauthorized and strictly prohibited. If you have received this e-mail in error, please notify the sender by reply immediately. Any e-mail erroneously
`transmitted to you should be immediately destroyed.
`
`From: Tarantino, Nicole M. <ntarantino@Potteranderson.com>
`Sent: Wednesday, November 28, 2018 4:53 PM
`To: Stamatios Stamoulis <stamoulis@swdelaw.com>; Richard Weinblatt <weinblatt@swdelaw.com>; Michael Shore
`
`3
`
`

`

`Case 1:16-cv-00290-MN Document 146-1 Filed 12/05/18 Page 4 of 85 PageID #: 4793
`
`<mshore@ShoreChan.com>; Alfonso G Chan <achan@ShoreChan.com>; Joseph DePumpo
`<jdepumpo@ShoreChan.com>; Russell DePalma <rdepalma@ShoreChan.com>; Ari Rafilson
`<arafilson@ShoreChan.com>; Andrew M. Howard <ahoward@ShoreChan.com>; Christopher Evans
`<cevans@ShoreChan.com>; Hiromasa Ohashi <ohashi@ohashiandhorn.com>; Jeff Horn <horn@ohashiandhorn.com>;
`Cody Kachel <ckachel@ohashiandhorn.com>; Will Ellerman <wellerman@ShoreChan.com>; Chiji Offor
`<coffor@ShoreChan.com>; Sam Joyner <sjoyner@ShoreChan.com>; TeamIPB_Omni_DE_290
`<TeamIPB_Omni_DE_290@ShoreChan.com>
`Subject: Godo Kaisha IP Bridge 1 v. OmniVision Technologies, Inc. (C.A. No. 16-290-MN)
`
`Attached is your service copy of the following documents which were filed and/or served in
`the above-referenced action today.
`
`
`
`
`
`
`
`[DI 130] [SEALED] Letter to The Honorable Maryellen Noreika from David E. Moore,
`Esquire regarding discovery disputes
`[DI 131] DECLARATION re [130] Letter [Declaration of Diyang Liu with Exhibits A-E and R-
`U]
`[DI 132] [SEALED] DECLARATION re [130] Letter [Declaration of Naoya Son with Exhibits
`F-Q]
`
`Please use the sharefile link below to access the Exhibits to the Declarations.
`https://potteranderson.sharefile.com/d-sba8f384dce44a6ba
`
`Thank you,
`
`Nicole M. Tarantino
`Assistant to David E. Moore
` D. Ryan Slaugh
` Jennifer P. Buckley
` Tracey Timlin
`
`Potter Anderson & Corroon LLP
`1313 North Market Street
`P.O. Box 951
`Wilmington, DE 19899-0951
`302 984 6264 Direct Dial
`302 658 1192 Fax
`ntarantino@potteranderson.com
`www.potteranderson.com
`
`Potter Anderson & Corroon LLP is not providing any advice in this communication with respect to any federal tax matters.
`
`THIS ELECTRONIC MAIL TRANSMISSION AND ANY ATTACHMENTS MAY CONTAIN PRIVILEGED, CONFIDENTIAL, OR PROPRIETARY
`INFORMATION INTENDED ONLY FOR THE PERSON(S) NAMED. IF THE READER OF THIS MESSAGE IS NOT THE INTENDED RECIPIENT OR
`THE AUTHORIZED REPRESENTATIVE OF THE INTENDED RECIPIENT, YOU ARE HEREBY NOTIFIED THAT ANY DISTRIBUTION, COPYING, OR
`DISCLOSURE OF THIS COMMUNICATION IS STRICTLY PROHIBITED.
`
`4
`
`

`

`Case 1:16-cv-00290-MN Document 146-1 Filed 12/05/18 Page 5 of 85 PageID #: 4794
`Case 1:16-cv-00290-MN Document 146-1 Filed 12/05/18 Page 5 of 85 PageID #: 4794
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`ATTACHMENTS
`
`ATTACHMENTS
`TO
`NOVEMBER 29, 2018
`NOVEMBER 29, 2018
`EMAIL
`
`TO
`
`EMAIL
`
`

`

`Case 1:16-cv-00290-MN Document 146-1 Filed 12/05/18 Page 6 of 85 PageID #: 4795
`
`Carlson, Erik
`
`From:
`Sent:
`To:
`Cc:
`
`Subject:
`
`Carlson, Erik
`Tuesday, November 27, 2018 12:47 PM
`Chiji Offor; Villarreal, Jose
`WSGR - OVT/IP Bridge; David Ellis Moore; Bindu Palapura; TeamIPB_Omni_DE_290; Sam
`Joyner; Stamatios Stamoulis
`RE: Godo Kaisha IP Bridge 1 v. OmniVision Ltd., No. 1:16-CV-290 (D. Del.)--IP Bridge's
`motion to compel discovery responses
`
`Categories:
`
`OmniVision - IPB 1
`
`Chiji,
`
`Thank you for your email. We received Godo’s supplemental ’677 patent infringement contentions and
`supplemental response to Interrogatories on 11/16, more than two weeks after the Markman hearing and
`almost a week after we had asked for the amended contentions to be served by.
`
`1. Amendment to ’677 patent infringement contentions. Godo has failed to provide a satisfactory set of
`contentions for the ’677 patent. For example, the contentions include an equation similar to what was
`presented at the Markman hearing for the first time but fails to explain how that equation is the one that
`should apply out of the multiple that could apply. Furthermore, the equation appears to have been dropped
`into the old charts without many changes suggesting Godo is maintaining the substance of its “flatly wrong”
`average density theory. Finally, even if one were to accept that Godo’s equation is the only one that should
`apply, the contentions fail to show how Godo is applying that equation and what areas and the perimeters are
`used. All of this just further supports that the claims are indefinite.
`
`2. Interrogatory No. 8 conception and reduction to practice dates. Godo’s response to Interrogatory No. 8 is
`deficient because Godo fails to identify any dates for conception and reduction to practice. Simply responding
`with the “earliest priority date (domestic or foreign) stated on the face of such patent” does not identify a
`date. Determining whether an application is entitled to priority from an earlier filing date requires an analysis
`as to whether the earlier filings comply with the written description requirement. E.g. Lockwood v. American
`Airlines, Inc., 107 F. 3d 1565, 1571 (Fed. Cir. 1997). OmniVision asked for Godo’s contentions on this issue in
`Interrogatory No. 8 and Godo simply identified the analysis that would have to be done. Godo’s response is
`also improper as it purports to preserve Godo’s ability to argue for an earlier conception and reduction to
`practice date based on an inference from the highly technical nature and detailed disclosure of each invention.
`Godo has failed to identify any corroboration—or even any evidence—for an earlier date. E.g. Mahurkar v. CR
`Bard, Inc., 79 F. 3d 1572, 1577 (Fed. Cir. 1996). If you have authority that allows Godo to argue for an earlier
`conception and reduction to practice date based on such an inference please identify it.
`
`3. Interrogatory No. 14 information about Godo and affiliates. Godo’s response to Interrogatory No. 14 is
`incomplete because it only purports to identify the owners of Godo’s parent company IP Bridge, Inc. when
`then Interrogatory asked for more information about Godo and its affiliates, e.g. executives, fund managers,
`and investors. We need this information to determine what, if any, additional depositions to notice.
`
`4. 3rd party deposition status. As to a list of 3rd party deposition targets, we need that list and the current
`status of 3rd party deposition planning. Godo’s subpoena to Apple is a recent example of why this is
`
`1
`
`

`

`Case 1:16-cv-00290-MN Document 146-1 Filed 12/05/18 Page 7 of 85 PageID #: 4796
`necessary. We received a notice of a subpoena for deposition listing November 30 as the date but had to
`email to ask whether this deposition would actually go forward because we had heard nothing and November
`30 is 3 days away. Godo’s concern that OmniVision would obstruct third party discovery is incorrect and
`groundless.
`
`5. Translation of documents responsive to Interrogatory No. 15. It appears we have received neither a
`supplemental response to Interrogatory No. 15 nor a translation of the documents that Godo had identified in
`its previous response to that interrogatory.
`
`Please let me know what you intended by including an excerpt of OmniVision’s response to Interrogatory No.
`11 and an excerpt of Mr. Li’s testimony. It is unclear from your email.
`
`Regarding Godo’s requests, we explained how one of the main concerns with Godo’s requests is that they are
`overbroad and that we’d consider more narrowed requests, like the one Godo suggested related to John Li’s
`documents. Could you identify what John Li documents you are referring to or point us to the part of his
`deposition you are thinking of? We remain willing to address targeted requests, such as these.
`
`I am happy to discuss any of the outstanding issues by phone with an aim of reducing and narrowing the
`disputes presented to the Court at the December 3 teleconference.
`
`Regards,
`Erik
`
`Erik J. Carlson • Wilson Sonsini Goodrich & Rosati
`633 West Fifth Street, Suite 1550 • Los Angeles, CA 90071 • 323.210.2940 • ecarlson@wsgr.com
`
`From: Chiji Offor [mailto:coffor@ShoreChan.com]
`Sent: Monday, November 19, 2018 10:54 PM
`To: Carlson, Erik; Villarreal, Jose
`Cc: WSGR - OVT/IP Bridge; David Ellis Moore; Bindu Palapura; TeamIPB_Omni_DE_290; Sam Joyner; Stamatios
`Stamoulis
`Subject: RE: Godo Kaisha IP Bridge 1 v. OmniVision Ltd., No. 1:16-CV-290 (D. Del.)--IP Bridge's motion to compel
`discovery responses
`
`Erik,
`
`Regarding your email below, IP Bridge has supplemented its responses to Interrogatories 4, 8, 12, and 14, has
`supplemented its ’677 patent infringement contentions claim charts, and has offered 30(b)(6) deposition dates. The parties
`are negotiating the details of the 30(b)(6) dates/times offered.
`
`Regarding your point number 3, I did not agree to provide a list as you state, and IP Bridge did not fail to give
`OmniVision reasonable notice of any subpoenas. I informed you that we have complied with the rules in seeking
`testimony from third parties by subpoena and providing notice of any confirmed deposition. Further, I raised our concerns
`that OmniVision would obstruct third party discovery in view of its discovery positions and witness testimony. You
`indicated that as officers of the court OmniVision’s counsel would not.
`
`2
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`

`

`Case 1:16-cv-00290-MN Document 146-1 Filed 12/05/18 Page 8 of 85 PageID #: 4797
`
`INTERROGATORY NO. 11: State the name and
`address of every importer, seller, marketer, distributor,
`or manufacturer of any smartphone, tablet, mobile
`device, digital still camera, automobile component,
`automobile, medical device, wearable technology,
`robotics application, machine vision application,
`security camera, surveillance system, PC, notebook,
`web camera, or other imaging application that
`integrates or otherwise includes an OMNIVISION
`PART manufactured or supplied with OmniVision’s
`authorization on or after April 22, 2008.
`
`10/26/2018 OmniVision Response:
`OmniVision has no direction or control over
`the disposition of its image sensors
`following the sale of its image sensors. As a
`result, OmniVision does not have possession,
`custody, or control of information that is
`responsive to this interrogatory.
`
`10/17/2018 Testimony of John Li, Senior Vice President of System Technologies, OmniVision
`
`Finally, it should be clear to those on the call that we also conferred regarding OmniVision’s deficient responses to each
`of IP Bridge’s discovery requests set forth in Sam’s November 6, 2018 email (which is part of this email chain). In
`response, Lisa and Jose indicated that OmniVision would stand on its prior responses and would not provide any further
`information, or any information at all in some cases. OmniVision did not provide any sales data until October 2018, and
`on the call I informed Jose of our position that we are entitled to global sales information in response to the interrogatories
`and RFPs listed in Sam’s November 6 email (i.e., ROG's 1 & 13; RFP’s 44, 48, 49, 50, 51, 52, 74, 76, 78). He disagreed.
`Lisa also represented that certain of the depositions that are the subject of IPB RFP Nos. 28-40 did not occur. Finally, I
`raised whether OmniVision would produce the documents John Li identified in his 10/17/18 deposition. While you
`characterize this as a “new request,” the documents fall within the scope of the documents we already requested via RFP
`Nos. 59-64—each of which requests certain “communications and documents received, sent, or possessed by JOHN LI.”
`After the call, Stam contacted the Court to obtain dates for the discovery hearing so that our issues would be raised with
`the Court.
`
`Respectfully,
`Chijioke E. Offor, Partner
`
`office: 214.593.9128 • cell: 214.901.8306 • fax: 214.593.9111
`Shore Chan DePumpo LLP
`901 Main Street • Suite 3300 • Dallas, Texas 75202
`coffor@shorechan.com • www.shorechan.com
`
`NOTICE OF CONFIDENTIALITY:
`The information contained in and transmitted with this e-mail may be subject to the Attorney-Client and Attorney Work Product privileges, and is Confidential. It is intended only for the
`individuals or entities designated as recipients above. You are hereby notified that any dissemination, distribution, copying, use or reliance upon the information contained in and transmitted
`with this e-mail by or to anyone other than the addressee designated above by the sender is unauthorized and strictly prohibited. If you have received this e-mail in error, please notify the
`sender by reply immediately. Any e-mail erroneously transmitted to you should be immediately destroyed.
`
`___
`
`3
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`

`

`Case 1:16-cv-00290-MN Document 146-1 Filed 12/05/18 Page 9 of 85 PageID #: 4798
`
`From: Carlson, Erik <ecarlson@wsgr.com>
`Sent: Friday, November 9, 2018 7:11 PM
`To: Sam Joyner <sjoyner@ShoreChan.com>; Chiji Offor <coffor@ShoreChan.com>
`Cc: OVT IPBridge <OVT_IPBridge@wsgr.com>; David Ellis Moore <dmoore@potteranderson.com>; Bindu Palapura
`<bpalapura@potteranderson.com>; TeamIPB_Omni_DE_290 <TeamIPB_Omni_DE_290@ShoreChan.com>; Jose
`Villarreal <jvillarreal@wsgr.com>
`Subject: RE: Godo Kaisha IP Bridge 1 v. OmniVision Ltd., No. 1:16-CV-290 (D. Del.)--IP Bridge's motion to compel
`discovery responses
`
`Counsel,
`
`This email memorializes issues discussed on today’s meet and confer.
`
`2.
`
`Godo’s Discovery Deficiencies:
`’677 patent infringement contentions. Godo indicated it will supplement by 11/16. OmniVision will
`1.
`raise with Court given Godo’s delay.
`Interrogatories 4 (marking), 8 (conception and RtP), 12 (secondary considerations), 14 (Godo
`affiliates and investors). Godo will supplement by 11/16. OmniVision will raise with Court given Godo’s
`delay and prior commitment to supplement by 11/6.
`3. Godo’s failure to provide reasonable notice of third party subpoenas. Godo agreed to provide a list all
`third parties that had been subpoenaed and copies of subpoenas served on third parties. Godo agreed
`to keep OmniVision better informed of third party deposition planning, including proposed dates and
`final dates. Godo agreed to propose November 14 and 15 as a date for the Huawei deposition (an
`agreement Godo has already failed to follow through on). If reasonable notice is not given, OmniVision
`will move to quash subpoenas and/or will move for a protective order to prevent use of deposition
`testimony.
`4. Godo’s failure to provide English translations. Godo will evaluate English translations produced in the
`NDCA case that were not produced in the Del. case (e.g., 778-IPB-OVT_0000309–325; 778-IPB-
`OVT_0000326–341) in light of Godo’s confirmation that it had produced all translations in Del. case.
`Additionally, Godo’s amended response to OmniVision Interrogatory 15 (value of the asserted patents)
`stating that it “does not maintain records” responsive contradicts its earlier response citing
`to Japanese documents (290-IPB-OVT004967-004968, 290-IPB-OVT005413-005414, 290-IPB-
`OVT007874-007904, 290-IPB-OVT007919-008068). WSGR review suggests that the earlier-cited
`documents are responsive to ROG 15. Godo will evaluate its amended response to interrogatory 15.
`5. Godo’s failure to provide dates for 30(b)(6) deposition. See my earlier email to Mr. Offor re this topic.
`
`Other Issues:
`1. Godo’s request for global sales information in response to ROG’s 1 & 13; RFP’s 44, 48, 49, 50-52, 75,
`76, 78. Godo clarified that its only purported issue with OmniVision’s production/responses is the
`omission of foreign sales information. OmniVision maintains its objections, including that evidence re
`extra-territorial sales is not relevant.
`2. Godo’s RFPs re John Li documents/communications. Godo proposed, for the first time, a narrowed set
`of documents that John Li purportedly referenced during his deposition. Godo will send additional info
`and OmniVision will consider this new request.
`
`Regards,
`Erik
`
`4
`
`

`

`Case 1:16-cv-00290-MN Document 146-1 Filed 12/05/18 Page 10 of 85 PageID #: 4799
`
`Erik J. Carlson • Wilson Sonsini Goodrich & Rosati
`633 West Fifth Street, Suite 1550 • Los Angeles, CA 90071 • 323.210.2940 • ecarlson@wsgr.com
`
`From: Carlson, Erik
`Sent: Friday, November 9, 2018 8:40 AM
`To: Sam Joyner; Villarreal, Jose
`Cc: Chiji Offor; WSGR - OVT/IP Bridge; David Ellis Moore; Bindu Palapura; TeamIPB_Omni_DE_290
`Subject: RE: Godo Kaisha IP Bridge 1 v. OmniVision Ltd., No. 1:16-CV-290 (D. Del.)--IP Bridge's motion to compel
`discovery responses
`
`Sam,
`
`On the meet and confer today, please be prepared to discuss IP Bridge’s failure to provide dates for 30(b)(6)
`depositions (see attached 10/30/2018 email from L. Zang).
`
`Regards,
`Erik
`
`Erik J. Carlson • Wilson Sonsini Goodrich & Rosati
`633 West Fifth Street, Suite 1550 • Los Angeles, CA 90071 • 323.210.2940 • ecarlson@wsgr.com
`
`From: Carlson, Erik
`Sent: Wednesday, November 07, 2018 11:14 AM
`To: Sam Joyner; Villarreal, Jose
`Cc: Chiji Offor; WSGR - OVT/IP Bridge; David Ellis Moore; Bindu Palapura; TeamIPB_Omni_DE_290
`Subject: RE: Godo Kaisha IP Bridge 1 v. OmniVision Ltd., No. 1:16-CV-290 (D. Del.)--IP Bridge's motion to compel
`discovery responses
`
`Sam,
`
`On the parties 10/18 meet and confer we discussed the items listed in the attached email. As to items 3 – 6 in
`the attached email, we explained why Godo’s responses to interrogatories 4, 8, 12, and 14 are deficient and
`Godo indicated it would review its responses and provide a supplement, if it intended to do so, by 11/6. I do
`not believe we received any supplemental responses. We need the requested information for depositions and
`expert reports for at least the reasons explained on the meet and confer and intend to ask the court to order
`Godo to supplement its responses to those interrogatories. Please be prepared to address this issue on the
`upcoming meet and confer.
`
`As to Item 1 (chipworks reports), Godo committed to produce.
`
`As to Item 2 (presuit investigation), Godo confirmed it would stand on its objections and the parties are at an
`impasse.
`
`5
`
`

`

`Case 1:16-cv-00290-MN Document 146-1 Filed 12/05/18 Page 11 of 85 PageID #: 4800
`As to item 7 (value of the asserted patents), Godo confirmed that its original response was wrong and that
`Godo does not does not maintain records responsive to this Interrogatory as indicated in its amended
`response.
`
`As to item 8 (English translations), Godo confirmed that it had produced all English translations in its
`possession, custody, or control.
`
`As to item 9 (prior art from other invalidity contentions), Godo committed to produce.
`
`Regards,
`Erik
`
`From: Sam Joyner [mailto:sjoyner@ShoreChan.com]
`Sent: Wednesday, November 7, 2018 8:48 AM
`To: Villarreal, Jose
`Cc: Chiji Offor; WSGR - OVT/IP Bridge; David Ellis Moore; Bindu Palapura; TeamIPB_Omni_DE_290
`Subject: RE: Godo Kaisha IP Bridge 1 v. OmniVision Ltd., No. 1:16-CV-290 (D. Del.)--IP Bridge's motion to compel
`discovery responses
`
`Jose,
`
`Thank you for your email. As indicated in my email below, the parties have already met and conferred
`about IP Bridge’s Interrogatory No. 1 and Request for Production Nos. 1-40 and are at an impasse.
`Tomorrow, we look forward to conferring with you regarding (1) OmniVision’s responses to IP Bridge’s
`Interrogatory Nos. 6, 11-13 and Request for Production Nos. 44-73 and (2) the bullet list items in your
`email.
`
`Let’s go with the time that Lisa Zang proposed (in a separate email): Thursday, November 8 at 10 a.m. –
`12 p.m. Pacific.
`
`Let’s use the following dial-in information: (218) 936-8679 [180700#].
`
`Talk soon,
`Sam
`
`Samuel E. Joyner
`Partner
`
`D 214.593.9124 / C 214.923.1543 / F 214.593.9111
`SJoyner@ShoreChan.com / ShoreChan.com
`
`Shore Chan DePumpo LLP
`901 Main Street / Suite 3300 / Dallas, Texas 75202
`
`NOTICE OF CONFIDENTIALITY:
`
`6
`
`

`

`Case 1:16-cv-00290-MN Document 146-1 Filed 12/05/18 Page 12 of 85 PageID #: 4801
`
`The information contained in and transmitted with this e-mail may be subject to the Attorney-Client and Attorney Work Product privileges, and is
`Confidential. It is intended only for the individuals or entities designated as recipients above. You are hereby notified that any dissemination, distribution,
`copying, use or reliance upon the information contained in and transmitted with this e-mail by or to anyone other than the addressee designated above by the
`sender is unauthorized and strictly prohibited. If you have received this e-mail in error, please notify the sender by reply immediately. Any e-mail erroneously
`transmitted to you should be immediately destroyed.
`
`From: Villarreal, Jose <jvillarreal@wsgr.com>
`Sent: Tuesday, November 6, 2018 8:25 PM
`To: Sam Joyner <sjoyner@ShoreChan.com>; OVT IPBridge <OVT_IPBridge@wsgr.com>; David Ellis Moore
`<dmoore@potteranderson.com>; Bindu Palapura <bpalapura@potteranderson.com>
`Cc: TeamIPB_Omni_DE_290 <TeamIPB_Omni_DE_290@ShoreChan.com>
`Subject: RE: Godo Kaisha IP Bridge 1 v. OmniVision Ltd., No. 1:16-CV-290 (D. Del.)--IP Bridge's motion to compel
`discovery responses
`
`Sam:
`Thank you for your email. Judge Noreika’s order expressly requires a meet and confer before contacting the
`court. Moreover, we disagree that a meet and confer has occurred on all these points IP Bridge outlined below. The
`person with most knowledge of our discovery is unavailable tomorrow, so we propose a conference on Thursday
`afternoon. Please let us know.
`
`In addition, please be ready to address at the meet and confer the following issues previously raised by OmniVision:
`Translations of Japanese documents
`•
`Improper notice provided by IP Bridge on its third-party depositions
`•
`IP Bridge’s admittedly incorrect infringement contentions for the ’677 patent and potential motion to strike
`•
`them unless a date certain is provided to amend those contentions.
`
`Thank you,
`Jose
`
`Jose C. Villarreal – Partner IP Litigation | Wilson Sonsini Goodrich & Rosati | 900 South Capital of Texas Highway, Las Cimas IV, Fifth Floor | Austin,
`TX 78746 | Main: 512.338.5400 | Direct: 512.338.5424 | Facsimile: 512.338.5499 | Mobile: 512.694.7061 | Email jvillarreal@wsgr.com |
`
`From: Sam Joyner [mailto:sjoyner@ShoreChan.com]
`Sent: Tuesday, November 6, 2018 3:35 PM
`To: Villarreal, Jose; WSGR - OVT/IP Bridge; David Ellis Moore; Bindu Palapura
`Cc: TeamIPB_Omni_DE_290
`Subject: Godo Kaisha IP Bridge 1 v. OmniVision Ltd., No. 1:16-CV-290 (D. Del.)--IP Bridge's motion to compel discovery
`responses
`Importance: High
`
`Counsel:
`
`We intend to move to compel on the following discovery requests. We believe the parties have already
`conferred fully as to Interrogatory No. 1 and Request for Production Nos. 1-40 and are at an impasse.
`Further, OmniVision’s written responses to the remaining requests make cle