Case 1:16-cv-00290-MN Document 55-1 Filed 02/15/18 Page 1 of 6 PageID #: 1572
`Case 1:16-cv-00290-MN Document 55-1 Filed 02/15/18 Page 1 of 6 PageID #: 1572
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`EXHIBIT 1
`EXHIBIT 1
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`Case 1:16-cv-00290-MN Document 55-1 Filed 02/15/18 Page 2 of 6 PageID #: 1573
`
`Will Ellerman
`
`From:
`Sent:
`To:
`Cc:
`Subject:
`
`Villarreal, Jose <jvillarreal@wsgr.com>
`Friday, January 19,2018 2:07 PM
`Will Ellerman; Ari Rafilson
`Bindu Palapura; Erik Carlson; Stamatios Stamoulis; Henry Pan
`RE: lP Bridge v. OmniVision (D. Del).
`
`will,
`4 pm eastern works for us. Please send us a dial-in
`
`As we continue to seek a path forward, we respectfully restate that it is premature to involve the court at this
`time. lnstead, lP-Bridge could serve its amended contentions after its expert has performed the GDS inspection and
`reviewed other documents. At that time OmniVision will have the amended contentions in hand, and will be able to
`make a determination as to whether it opposes the amendment or not. OmniVision will not be unreasonable in its
`determination. lf the parties disagree, that would be the time to seek judicial assistance. Of course, the other options
`we propose in this email string remain on the table.
`
`Thank you
`Jose
`
`From: Will Ellerman fmailto:wellerman@ShoreChan.com]
`Sent: Friday, January 19,2018 1:53 PM
`To: Villarreal, Jose; Ari Rafilson
`Cc: Bindu Palapura; Carlson, Erik; Stamatios Stamoulis; Pan, Henry
`Subjectr RE: IP Bridge v. OmniVision (D, Del).
`
`How about 4:00? Or perhaps a little after, because I know Stam has a conflict until 4:00
`
`From: Villa rrea l, Jose Ima ilto: ivil la rrea I @wse!:.cqm]
`Sent: Friday, January 19,20181:15 PM
`To: Will Ellerman <wellerman@ShoreChan.com>; Ari Rafilson <arafilson@ShoreChan.com>
`Cc: Bindu Palapura <bpalapura@potteranderson.com>; Erik Carlson <ecarlson@wsgr.com>; Stamatios Stamoulis
`<sta m o u I i s @SWd e !A!v.ee n0>; H e n ry P a n < h pa n @ wsgldem>
`Subject: RE: lP Bridge v. OmniVision (D. Del).
`
`will
`Our Delaware counsel is available to join us to further meet and confer at 3:30 Eastern. Do this work for lP-Bridge?
`
`From: WiII EIlerman [mailtql rellerman@S_h_oreChan.com]
`Sent: Friday, January 19,20LB 1:02 PM
`To: Villarreal, Jose; Ari Rafilson
`Cc: Bindu Palapura; Carlson, Erik; Stamatios Stamoulis; Pan, Henry
`Subject: RE: IP Bridge v. OmniVision (D, Del).
`
`Jose,
`Our request was simply for clarification. We will serve our initial contentions Monday as described. They will need to be
`amended upon expert review of OmniVision's GDS files, which has not happened because of the protective order issue
`that was just heard two days ago. This is not a difficult issue, and certainly does not warrant an agreement that
`OmniVision does not have to serve its contentions until April.
`
`1
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`

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`Case 1:16-cv-00290-MN Document 55-1 Filed 02/15/18 Page 3 of 6 PageID #: 1574
`Your 5 week option is not a solution. No protective order has been entered, and you insisted on including provisions in
`that order that we will need to comply with once it is entered.
`Please see my earlier email regarding a motion conference.
`wilt
`
`From: Vil larrea l, Jose Ima ilto: ivil la.rrea I @wsgr.com]
`Sent: Friday, January 19,2018 12:28 PM
`To: Ari Rafilson <arafilson@ShoreCha n.com>
`Cc: Bindu Palapura <bpal-apura@potteranderson.com>; Erik Carlson <ecarlson@wsgr.com>; Will Ellerman
`<Urgllerman@ShoreChan.com>; Stamatios Stamoulis <stamoulis@swdelaw.c_om>; Henry Pan <hpa.n@wsgr.com>
`Subject: RE: lP Bridge v. OmniVision (D. Del).
`
`Ari
`Thanks for your call stating that this proposal is unacceptable as lP-Bridge wants no qualifications on its proposed
`amendment. I told you this would be difficult to accept as your amendment may turn out to be unreasonable (e.g.,
`adding not accused products to the infringement accusations).
`
`I offered the alternative of a 5 week extension to serve initial infringement contentions and a reciprocal5 week
`extension to the invalidity contentions. You declined this option also.
`
`lf you have any proposed wording to modify either of Omnivision's proposal's please let me know
`Thanks
`Jose
`
`From: Villarreal, Jose
`Sent: Friday, January 19, 2018 11:34 AM
`To: 'Ari Rafilson'
`Cc: Bindu Palapura; Carlson, Erik; Will Ellerman; Stamatios Stamoulis; Pan, Henry
`Subject: RE: IP Bridge v, OmniVision (D, Del).
`
`Ari
`
`Thank you for being available yesterday to discuss your discovery proposal. We believe a motion to the Court regarding
`unknown amendments to infringement contentions would be premature and speculative. However, we understand
`your concerns related to the fact that your expert has yet to review the GDS files made available for inspection by
`Omnivision, and that lP Bridge has not yet agreed to the representative products that Omnivision has
`proposed, Regardless, we will try to address your concerns and are hopeful we can resolve this issue without involving
`the Court. lt is our view that meaningful contentions exchanged early in the case will benefit both parties, While we
`can't agree to either of your proposals as drafted, below is a counterproposal.
`
`We propose that lP Bridge serve its infringement contentions on 1,/22 and amend its infringement contentions on 3/5
`(six weeks after initially serving them) to include information based on your expert's review of OmniVision's core
`technical document production. Since we have not seen either the initial contentions or the amendment we cannot
`agree to give lP Bridge the right to amend its infringement contentions in any way it desires to do so. However, we can
`agree not to move to strike the amended infringement contentions served by the proposed date on the sole basis that
`the amendment includes additional content from your expert's review of OmniVision's core technical documents
`discovery. We reserve the right to move to strike if the amendment fundamentally changes lP Bridge's infringement
`theories or otherwise unfairly prejudices OmniVision. We will not exercise this right unreasonably.
`
`ln return, OmniVision seeks a reciprocal six week extension to serve invalidity contentions. The new deadline would be
`will be due on 4/1.6.
`
`2
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`

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`Case 1:16-cv-00290-MN Document 55-1 Filed 02/15/18 Page 4 of 6 PageID #: 1575
`
`Please let us know if this is acceptable
`Thank you
`Jose
`
`Jose C. Villarreal- Partner lP Litigation lWilson SonsiniGoodrich & Rosati 1900 South Capitalof Texas Highway, Las Cimas lV, Fifth Floor lAustin,
`IX78746 | Main: 512 338.54001 Direct: 512.338.5424 | Facsimile: 512.338.5499 | Mobile: 512.694.70611 Email ivillarreal@wsgr.com I
`
`From : Ari Rafilson Ima i]_to : a rafi lson @ShoreCha n,coml
`Sent: Thursday, January 18, 2018 10:02 AM
`To: Villarreal, Jose
`Cc: Bindu Palapura; Carlson, Erik; Will Ellerman; Carlson, Erik; Stamatios Stamoulis
`Subject: RE: IP Bridge v. OmniVision (D. Del).
`
`Jose,
`
`Let's use the following dial-in number for our call at 10 am PST (noon CST)
`
`Dial-in number: 218-936-8679
`Access code: 180700#
`
`Best Regards,
`
`Ari
`
`From: Villarreal, Jose [@]
`Sent: Thursday, January L8,2018 9:02 AM
`To: Ari Rafilson <arafilson@Shorech >
`Cc: Bindu Palapura <bpaleBUfa@pqltelatde$otr.cem>; Erik Carlson <ecatl.s.onlQulssr.eenn>; Will Ellerman
`<W*el |e_rma n @shaleehan CAXI>; E ri k Ca rI so n <eca rI so n @ lvsglee !t>
`Subject: RE: lP Bridge v. OmniVision (D. Del).
`
`Ari
`We can discuss at L0 am pacific. I may not have an answer to your proposal by that time however although I will
`try. Please send a dial-in.
`Thanks
`Jose
`
`From : Ari Rafilson [ma ilto : arafilson @ShoreCha n,com]
`Sent: Wednesday, January 77,2018 4:50 PM
`To: Villarreal, Jose
`Cc: Bindu Palapura; Carlson, Erik; Will Ellerman; Carlson, Erik
`Subject: RE: IP Bridge v. OmniVision (D, Del).
`
`Yes. Let's talk tomorrow at l-0. l'm assuming that you are proposing l-0 am PST which is noon our time
`
`As a preview, we noted in our briefing on the protective order issue that our preliminary infringement contentions are
`due on Monday. Because we have not had the opportunity to have an expert review OmniVision's GDS files, we are
`unable, at this time to agree that OmniVision's proposed "representative" products are truly representative, and further
`
`J
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`

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`Case 1:16-cv-00290-MN Document 55-1 Filed 02/15/18 Page 5 of 6 PageID #: 1576
`will not be able to provide a claim chart for each and every representative product identified by OmniVision for each
`asserted patent. What we can do by Monday's deadline is provide at least one chart demonstrating infringement by at
`least one accused product per product family (i.e. OmniBSl, Omni BSI-2, PureCel, ...). Often, but not always, these charts
`will be for products identified by OmniVision as representative, lf we had had the ability to have our expert review
`OmniVision's GDS files we could have provided more charts and provided more detail in the charts we are able to
`provide.
`
`According to the scheduling order, IPB's infringement contentions are "initial." This implies that IPB is free to amend its
`contentions. Nevertheless, IPB seeks OmniVision's explicit agreement to one of the following options:
`
`t. IPB may freely amend its contentions within 2 months after its expert has reviewed OmniVision's GDS files. ln
`exchange IPB would agree that OmniVision can freely amend its invalidity contentions within 2 months after
`receiving any such amendment; or
`2. The parties could propose a change to the scheduling order for infringement and invalidity contentions that
`would build in time for the above review to occur.
`
`We prefer option 1 because it has less impact on the schedule and leaves claim construction proceedings on the
`currently-scheduled dates. Nevertheless, we are open to eitheroption. lf we cannot come to an agreement, we intend
`to file a motion on or before Monday, the day our contentions are due.
`
`We look forward to discussing these matters with you
`
`Ari
`
`From: Villa rrea l, Jose Ima ilto : ivil la rrea I @wsgr.co m]
`Sent: Wednesday, January t7,2OI8 4:23 PM
`To: Ari Rafilson <arafilson@ShoreChan.com>
`Cc: Bindu Palapura <bpalapura@pottercndetsqn eqm>; Erik Carlson <ecarlson@wsgr.com>; Will Ellerman
`<wellerma n@ShoreChan.com>; Erik Carlson <ecarlson@wsgr.com>
`Subject: RE: lP Bridge v. OmniVision (D. Del).
`
`Ari,
`I am tied up this afternoon but can be available tomorrow morning between 10 and l-2 noon or 1--2 pm. Can you please
`generally outline what you want to propose ahead of the call?
`Thanks
`Jose
`
`JoseC Villarreal-PartnerlPLitigationlWilsonSonsiniGoodrich&Rosatil900SouthCapitalofTexasHighway,LasCimaslV,FifthFloorlAustin,
`TX7B746 l Main: 512 338.5400 l Direct: 512.338.5424 l Facsimile: 512.338.5499 l Mobile: 512.694.7061 1 Emai| ivillarreal@wsgr.com I
`
`From: Ari Rafilson Imailtqarafilson@ShoreChan,com]
`Sent: Wednesday, January L7,20LB 4:09 PM
`To: Villarreal, Jose
`Cc: Bindu Palapura; Carlson, Erik; Will Ellerman
`Subject: IP Bridge v. OmniVision (D, Del).
`Impoftance: High
`
`Jose, We wanted to run something by you following our call with the Court earlier today. Please call me today if possible,
`or advise regarding your availability tomorrow morning.
`
`Best Regards,
`
`4
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`Case 1:16-cv-00290-MN Document 55-1 Filed 02/15/18 Page 6 of 6 PageID #: 1577
`
`Sllong CHAT'I
`Dgrunapff rm'
`
`Ari Rafilson
`Bank of America Plaza
`901 Main Street, Suite 3300
`Dallas, Texas 75202
`2t4-593-9114 (Direct)
`214-s93-91.10 (Firm)
`214-s93-9111 (Fax)
`
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`use of the intended recipient. Any review, copying, or distribution of this email (or any attachments thereto) by
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