Case 1:16-cv-00455-RGA Document 43 Filed 02/03/17 Page 1 of 20 PageID #: 2206
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`C.A. No. 16-453 (RGA)
`
`C.A. No. 16-454 (RGA)
`
`C.A. No. 16-455 (RGA)
`
`)))))))))
`
`))))))))) )))))))))))
`
`ACCELERATION BAY LLC,
`
`Plaintiff,
`
`v.
`
`ACTIVISION BLIZZARD, INC.
`
`Defendant.
`ACCELERATION BAY LLC,
`
`Plaintiff,
`
`v.
`
`ELECTRONIC ARTS INC.,
`
`Defendant.
`ACCELERATION BAY LLC,
`
`Plaintiff,
`
`v.
`
`TAKE-TWO INTERACTIVE SOFTWARE,
`INC., ROCKSTAR GAMES, INC. and
`2K SPORTS, INC.,
`
`Defendants.
`
`NOTICE OF SUBPOENA
`
`PLEASE TAKE NOTICE that the subpoena attached hereto as Exhibit 1 will be
`
`served upon The Boeing Company.
`
`

`

`Case 1:16-cv-00455-RGA Document 43 Filed 02/03/17 Page 2 of 20 PageID #: 2207
`
`OF COUNSEL:
`
`Michael A. Tomasulo
`Gino Cheng
`David K. Lin
`WINSTON & STRAWN LLP
`333 South Grand Avenue, 38th Floor
`Los Angeles, CA 90071
`(213) 615-1700
`
`David P. Enzminger
`WINSTON & STRAWN LLP
`275 Middlefield Road, Suite 205
`Menlo Park, CA 94025
`(650) 858-6500
`
`Dan K. Webb
`Kathleen B. Barry
`WINSTON & STRAWN LLP
`35 West Wacker Drive
`Chicago, IL 60601
`(312) 558-5600
`
`February 3, 2017
`10786486
`
`MORRIS, NICHOLS, ARSHT & TUNNELL LLP
`/s/ Stephen J. Kraftschik
`_____________________________________
`Jack B. Blumenfeld (#1014)
`Stephen J. Kraftschik (#5623)
`1201 North Market Street
`P.O. Box 1347
`Wilmington, DE 19899
`(302) 658-9200
`jblumenfeld@mnat.com
`skraftschik@mnat.com
`
`Attorneys for Defendants
`
`- 2 -
`
`

`

`Case 1:16-cv-00455-RGA Document 43 Filed 02/03/17 Page 3 of 20 PageID #: 2208
`Case 1:16-cv-00455-RGA Document 43 Filed 02/03/17 Page 3 of 20 PagelD #: 2208
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`
`
`
`
`
`
`
`
`EXHIBIT 1
`EXHIBIT 1
`
`

`

`Case 1:16-cv-00455-RGA Document 43. Filed 02/03/17 Page 4 of 20 PagelD #: 2209
`Case 1:16-cv-00455-RGA Document 43 Filed 02/03/17 Page 4 of 20 PageID #: 2209
`
`AO 88B (Rev. 02/14) Subpoena to Produce Documents, Information, or Objects or to Permit Inspection of Premisesin a Civil Action
`
`UNITED STATES DISTRICT COURT
`for the
`
`Acceleration Bay LLC
`
`
`District of Delaware
`
`Plaintiff
`v.
`
`Civil Action No,
`
`16-453, 16-454, 16-455,
`
`Activision Blizzard Inc., Electronic Arts Inc.,
`
`Take-TwoInteractive SoftwareInc., et al.
`
`Defendant
`
`SUBPOENA TO PRODUCE DOCUMENTS, INFORMATION, OR OBJECTS
`OR TO PERMIT INSPECTION OF PREMISESIN A CIVIL ACTION
`
`To:
`
`The Boeing Company, C/O Corporation Service Company, 2711 Centerville Rd.,
`Wilmington, DE 19808
`(Name ofperson to whom this subpoenais directed)
`a Production: YOU ARE COMMANDEDto produce at the time, date, and place set forth below the following
`documents, electronically stored information, or objects, and to permit inspection, copying, testing, or sampling of the
`material: Produce documents requested in Attachment A.
`
`Place: Brandywine Process Servers
`2500 Delaware Avenue
`02/17/2017 10:00 am
`Wilmington, DE 19805
`C) Inspection ofPremises: YOU ARE COMMANDEDtopermitentry onto the designated premises,land, or
`other property possessed or controlled by youatthe time, date, and locationset forth below, so that the requesting party
`may inspect, measure, survey, photograph,test, or sample the property or any designated object or operation onit.
`
`2
`
`:
`
`Date and Time:
`
`Place:
`
`Date and Time: _
`
`
`
`NN
`Thefollowing provisions of Fed. R. Civ. P. 45 are attached — Rule 45(c), relating to the place of compliance;
`Rule 45(d), relating to your protection as a person subject to a subpoena; and Rule 45(e) and(g), relating to your duty to
`respondto this subpoena and the potential consequencesof not doing so.
`
`CLERK OF COURT
`
`OR
`ca
`
`
`Attorney ’ssignature
`Signature ofClerk or Deputy Clerk
`
`The name, address, e-mail address, and telephone numberofthe attorney representing (name ofparty)
`Activision Blizzard, Electronic Arts, Take-TwoInteractive Software
`, who issues or requests this subpoena, are:
`Kathleen Barry, Winston & Strawn LLP, 35 W. Wacker Dr., Chicago, IL 60601 Tel: 312-558-8046, kbarry@winston.com
`
`Notice to the person whoissues or requests this subpoena
`mtomasulo@winston.com
`If this subpoena commandsthe production of documents, electronically stored information, or tangible things orthe
`inspection of premises beforetrial, a notice and a copy of the subpoena mustbe served on eachparty in this case before
`it is served on the person to whomitis directed. Fed. R. Civ. P. 45(a)(4).
`
`

`

`Case 1:16-cv-00455-RGA Document 43 Filed 02/03/17 Page 5 of 20 PageID #: 2210
`
`AO 88B (Rev. 02/14) Subpoena to Produce Documents, Information, or Objects or to Permit Inspection of Premises in a Civil Action (Page 2)
`
`Civil Action No.
`
`16-453, 16-454, 16-455,
`
`PROOF OF SERVICE
`(This section should not be filed with the court unless required by Fed. R. Civ. P. 45.)
`
`I received this subpoena for (name of individual and title, if any)
`.
`
`on (date)
`
`(cid:117) I served the subpoena by delivering a copy to the named person as follows:
`
`(cid:117) I returned the subpoena unexecuted because:
`
`on (date)
`
`; or
`
`Unless the subpoena was issued on behalf of the United States, or one of its officers or agents, I have also
`tendered to the witness the fees for one day’s attendance, and the mileage allowed by law, in the amount of
`$
`.
`
`My fees are $
`
`for travel and $
`
`for services, for a total of $
`
`0.00
`
`.
`
`.
`
`I declare under penalty of perjury that this information is true.
`
`Date:
`
`Additional information regarding attempted service, etc.:
`
`Server’s signature
`
`Printed name and title
`
`Server’s address
`
`

`

`Case 1:16-cv-00455-RGA Document 43 Filed 02/03/17 Page 6 of 20 PageID #: 2211
`
`AO 88B (Rev. 02/14) Subpoena to Produce Documents, Information, or Objects or to Permit Inspection of Premises in a Civil Action(Page 3)
`
`(c) Place of Compliance.
`
`Federal Rule of Civil Procedure 45 (c), (d), (e), and (g) (Effective 12/1/13)
`(ii) disclosing an unretained expert’s opinion or information that does
`not describe specific occurrences in dispute and results from the expert’s
`study that was not requested by a party.
`(C) Specifying Conditions as an Alternative. In the circumstances
`described in Rule 45(d)(3)(B), the court may, instead of quashing or
`modifying a subpoena, order appearance or production under specified
`conditions if the serving party:
`(i) shows a substantial need for the testimony or material that cannot be
`otherwise met without undue hardship; and
`(ii) ensures that the subpoenaed person will be reasonably compensated.
`
` (1) For a Trial, Hearing, or Deposition. A subpoena may command a
`person to attend a trial, hearing, or deposition only as follows:
` (A) within 100 miles of where the person resides, is employed, or
`regularly transacts business in person; or
` (B) within the state where the person resides, is employed, or regularly
`transacts business in person, if the person
` (i) is a party or a party’s officer; or
` (ii) is commanded to attend a trial and would not incur substantial
`expense.
`
` (2) For Other Discovery. A subpoena may command:
` (A) production of documents, electronically stored information, or
`tangible things at a place within 100 miles of where the person resides, is
`employed, or regularly transacts business in person; and
` (B) inspection of premises at the premises to be inspected.
`
`(d) Protecting a Person Subject to a Subpoena; Enforcement.
`
` (1) Avoiding Undue Burden or Expense; Sanctions. A party or attorney
`responsible for issuing and serving a subpoena must take reasonable steps
`to avoid imposing undue burden or expense on a person subject to the
`subpoena. The court for the district where compliance is required must
`enforce this duty and impose an appropriate sanction—which may include
`lost earnings and reasonable attorney’s fees—on a party or attorney who
`fails to comply.
`
` (2) Command to Produce Materials or Permit Inspection.
`(A) Appearance Not Required. A person commanded to produce
`documents, electronically stored information, or tangible things, or to
`permit the inspection of premises, need not appear in person at the place of
`production or inspection unless also commanded to appear for a deposition,
`hearing, or trial.
`(B) Objections. A person commanded to produce documents or tangible
`things or to permit inspection may serve on the party or attorney designated
`in the subpoena a written objection to inspecting, copying, testing, or
`sampling any or all of the materials or to inspecting the premises—or to
`producing electronically stored information in the form or forms requested.
`The objection must be served before the earlier of the time specified for
`compliance or 14 days after the subpoena is served. If an objection is made,
`the following rules apply:
`(i) At any time, on notice to the commanded person, the serving party
`may move the court for the district where compliance is required for an
`order compelling production or inspection.
` (ii) These acts may be required only as directed in the order, and the
`order must protect a person who is neither a party nor a party’s officer from
`significant expense resulting from compliance.
`
` (3) Quashing or Modifying a Subpoena.
`(A) When Required. On timely motion, the court for the district where
`compliance is required must quash or modify a subpoena that:
` (i) fails to allow a reasonable time to comply;
`(ii) requires a person to comply beyond the geographical limits
`specified in Rule 45(c);
`(iii) requires disclosure of privileged or other protected matter, if no
`exception or waiver applies; or
`(iv) subjects a person to undue burden.
`(B) When Permitted. To protect a person subject to or affected by a
`subpoena, the court for the district where compliance is required may, on
`motion, quash or modify the subpoena if it requires:
`(i) disclosing a trade secret or other confidential research,
`development, or commercial information; or
`
`(e) Duties in Responding to a Subpoena.
`
` (1) Producing Documents or Electronically Stored Information. These
`procedures apply to producing documents or electronically stored
`information:
`(A) Documents. A person responding to a subpoena to produce documents
`must produce them as they are kept in the ordinary course of business or
`must organize and label them to correspond to the categories in the demand.
`(B) Form for Producing Electronically Stored Information Not Specified.
`If a subpoena does not specify a form for producing electronically stored
`information, the person responding must produce it in a form or forms in
`which it is ordinarily maintained or in a reasonably usable form or forms.
`(C) Electronically Stored Information Produced in Only One Form. The
`person responding need not produce the same electronically stored
`information in more than one form.
`(D) Inaccessible Electronically Stored Information. The person
`responding need not provide discovery of electronically stored information
`from sources that the person identifies as not reasonably accessible because
`of undue burden or cost. On motion to compel discovery or for a protective
`order, the person responding must show that the information is not
`reasonably accessible because of undue burden or cost. If that showing is
`made, the court may nonetheless order discovery from such sources if the
`requesting party shows good cause, considering the limitations of Rule
`26(b)(2)(C). The court may specify conditions for the discovery.
`
`(2) Claiming Privilege or Protection.
`(A) Information Withheld. A person withholding subpoenaed information
`under a claim that it is privileged or subject to protection as trial-preparation
`material must:
`(i) expressly make the claim; and
`(ii) describe the nature of the withheld documents, communications, or
`tangible things in a manner that, without revealing information itself
`privileged or protected, will enable the parties to assess the claim.
`(B) Information Produced. If information produced in response to a
`subpoena is subject to a claim of privilege or of protection as
`trial-preparation material, the person making the claim may notify any party
`that received the information of the claim and the basis for it. After being
`notified, a party must promptly return, sequester, or destroy the specified
`information and any copies it has; must not use or disclose the information
`until the claim is resolved; must take reasonable steps to retrieve the
`information if the party disclosed it before being notified; and may promptly
`present the information under seal to the court for the district where
`compliance is required for a determination of the claim. The person who
`produced the information must preserve the information until the claim is
`resolved.
`
`(g) Contempt.
`The court for the district where compliance is required—and also, after a
`motion is transferred, the issuing court—may hold in contempt a person
`who, having been served, fails without adequate excuse to obey the
`subpoena or an order related to it.
`
`For access to subpoena materials, see Fed. R. Civ. P. 45(a) Committee Note (2013).
`
`

`

`Case 1:16-cv-00455-RGA Document 43 Filed 02/03/17 Page 7 of 20 PageID #: 2212
`
`ATTACHMENT A
`
`DEFINITIONS
`
`1.
`
`“Acceleration Bay” or “Plaintiff” means and includes Acceleration Bay LLC
`
`together with each of its respective departments, divisions, subsidiaries, predecessors, and
`
`affiliates, past and present, and all employees, representatives, and/or agents acting or purporting
`
`to act on any or all of their respective behalves.
`
`2.
`
`“Defendants” shall mean Activision Blizzard, Inc., Electronic Arts Inc., Take-
`
`Two Interactive Software, Inc., Rockstar Games, Inc., and 2K Sports, Inc., including but not
`
`limited to their predecessors, all parent companies, partners, wholly or partially owned
`
`subsidiaries, divisions, past or present affiliated corporations, and each of their present and
`
`former employees, agents, officers, directors, representatives, consultants, accountants, and
`
`attorneys.
`
`3.
`
`“You,” “your”, and “Boeing” means and includes The Boeing Company together
`
`with each of its respective departments, divisions, subsidiaries, predecessors, and affiliates, past
`
`and present, and all employees, representatives, and/or agents acting or purporting to act on any
`
`or all of their respective behalves.
`
`4.
`
`“Panthesis” means collectively and/or individually, Panthesis, Inc., and/or its
`
`present and former officers, directors, employees, partners, corporate parent, subsidiaries, or
`
`affiliates.
`
`5.
`
`“Accused Products” shall mean any product or service manufactured, used, sold,
`
`offered for sale or imported into the United States by or on behalf of any Defendants that
`
`Acceleration Bay alleges infringes the Asserted Patents.
`
`

`

`Case 1:16-cv-00455-RGA Document 43 Filed 02/03/17 Page 8 of 20 PageID #: 2213
`
`6.
`
`“Asserted Patents” shall mean United States Patent Nos. 6,701,344; 6,714,966;
`
`6,732,147; 6,829,634; 6,910,069; and 6,920,497.
`
`7.
`
`The term “Related Application(s)” of a referenced patent or patents means any
`
`patent or patent application, filed anywhere in the world, that: (a) is a parent, child, or other
`
`ancestral application related in any way to the referenced patent; (b) is a continuation
`
`application, continuation-in-part application, divisional application, file-wrapper continuation,
`
`reexamination proceeding, reissue application, provisional application, or abandoned application
`
`of such referenced patent or the application that led to such referenced patent; (c) claims priority
`
`in whole or in part from such referenced patent or the application that led to such referenced
`
`patent; (d) is the basis for a claim of priority in whole or in part (including claims of benefits
`
`under 35 U.S.C. §§ 119(e) or 120) for such referenced patent; (e) was contemporaneously filed
`
`with and/or incorporated by reference within the application for the referenced patent or
`
`(f) shares subject matter with such referenced patent.
`
`8.
`
`9.
`
`“Named Inventor(s)” means and includes Fred B. Holt, and/or Virgil E. Bourassa.
`
`“These Cases” shall mean the lawsuit(s) filed by Acceleration Bay in the District
`
`of Delaware, C.A. Nos. 15-228 (RGA), 15-282 (RGA), 15-311 (RGA), 16-453 (RGA), 16-454
`
`(RGA), 16-455 (RGA), and related inter partes reviews, IPR2015-1951, IPR2015-1953,
`
`IPR2015-1964, IPR2015-1970, IPR2015-1972, IPR2015-1996, IPR2016-724, IPR2016-727,
`
`IPR2016-747.
`
`10.
`
`“Communication,” “communications,” or “communicated” shall mean and shall
`
`include any oral or written expression, statements, or utterance of any nature whatsoever,
`
`including but not limited to, correspondence, conversations, memoranda, notes, computer or
`
`electronic expressions and statements and telecommunications.
`
`2
`
`

`

`Case 1:16-cv-00455-RGA Document 43 Filed 02/03/17 Page 9 of 20 PageID #: 2214
`
`11.
`
`“Documents” shall have the meaning ascribed to that term in Rule 34 of the
`
`Federal Rules of Civil Procedure, and shall also include, without
`
`limitation, all writings,
`
`printouts, graphical material, and recordings as defined by Rule 1001 of the Federal Rules of
`
`Evidence, drawings, graphs, charts, photographs, film, audio or video recordings, facsimile
`
`transmissions, computer files, and electronic mail messages, and all data compilations from
`
`which information can be obtained, translated, if necessary, through detection devices into
`
`reasonably useable form. “Documents” also includes, without limitation, anything that can be
`
`classified as a “writing,” “original,” or “duplicate. “Documents” also include all drafts, all
`
`attachments to Documents, and all copies of Documents that are not identical duplicates of the
`
`original (for example, because handwriting, marginalia, or notes appear on the duplicate or are
`
`attached to it), whether or not the originals are in Acceleration Bay’s possession, custody or
`
`control.
`
`12.
`
`“Entity” or “entities” include natural persons, proprietorships, partnerships, firms,
`
`private corporations, public corporations, municipal corporations, governments (including
`
`foreign national governments, the government of the United States or any state or local
`
`government), all departments and agencies thereof, and any governmental agencies of any
`
`country, political subdivisions, groups, associations, or organizations.
`
`13.
`
`“Person” or “persons” shall mean any natural person, legal entity, business or
`
`other entities, including but not limited to any corporation, partnership, unincorporated
`
`association, joint venture, sole proprietorship, government agency, business trusts, or any and/or
`
`all other organization or group of individuals; as well as any officer, director, employee, partner,
`
`corporate parent, subsidiary, affiliate, agent, representative, attorney, or principal thereof.
`
`3
`
`

`

`Case 1:16-cv-00455-RGA Document 43 Filed 02/03/17 Page 10 of 20 PageID #: 2215
`
`14.
`
`“Thing” or “things” shall mean any tangible object other than a document as
`
`defined herein, and includes objects of every kind and nature.
`
`15.
`
`“Relating to,” “related to” or “concerning” shall mean anything pertaining to,
`
`comprising, evidencing, alluding to, responding to, connected with, commenting on, with respect
`
`to, about, regarding, resulting from, embodying, explaining, supporting, discussing, showing,
`
`describing, reflecting, analyzing, constituting, setting forth, in respect of, or having any direct or
`
`indirect logical or factual connection with the subject matter in question.
`
`16.
`
`“Including” shall not be construed as limiting any request, and shall mean the
`
`same as “including, but not limited to.”
`
`17.
`
`The use of the term “the” shall not be construed as limiting the scope of any
`
`document request.
`
`18.
`
`“Any” or “each” shall be understood to include and encompass “all;” “or” shall be
`
`understood to encompass “and;” “and” shall be understood to include and encompass “OR.”
`
`19.
`
`“And,” “or,” and “and/or” shall be construed conjunctively or disjunctively as
`
`necessary to make the request inclusive rather than exclusive.
`
`20.
`
`The plural of any word shall be construed as the singular, and vice versa, as
`
`necessary, in order to bring within the scope of these requests any information, documents, or
`
`things that might otherwise be construed to be outside their scope.
`
`INSTRUCTIONS
`
`1.
`
`You are to search all documents and things within your possession, custody or
`
`control or within the possession, custody or control of your attorneys, accountants, or other
`
`agents or representatives, wherever located, including but not limited to documents and things
`
`placed in storage facilities and documents and things in the possession of any employee, agent,
`
`4
`
`

`

`Case 1:16-cv-00455-RGA Document 43 Filed 02/03/17 Page 11 of 20 PageID #: 2216
`
`representative, or person acting or purporting to act on your behalf whether located at his or her
`
`residence(s) and/or place(s) of business(es).
`
`2.
`
`Pursuant to Fed. R. Civ. P. 34(b), you are instructed to produce documents as they
`
`are kept in the usual course of business or the documents shall be organized and labeled to
`
`correspond to the categories for each Request. In addition, documents are to be produced in full
`
`and unexpurgated form; redacted documents will not constitute compliance with a Request.
`
`3.
`
`Different versions of the same documents, handwritten notes or notations in any
`
`form, draft documents and documents with handwritten notations or marks not found in the
`
`original or on other copies are considered to be different documents for the purpose of
`
`production in compliance with these requests, and each form should be produced independently.
`
`4.
`
`Electronic and computerized information must be produced in an intelligible
`
`format or together with a description of the system from which it was derived sufficient to permit
`
`rendering the materials intelligible.
`
`5.
`
`All documents produced in response to these Requests shall be produced in toto
`
`notwithstanding the fact that portions thereof may contain information not requested.
`
`6.
`
`All documents produced in response to these Requests shall be produced along
`
`with any and/or all attachments and/or enclosures as have ever been attached to and/or enclosed
`
`with such documents at any time.
`
`7.
`
`Should you deem any responsive document to be privileged or subject to the work
`
`product doctrine, please list and identify each such document to the extent possible and state
`
`information sufficient to permit Defendants to evaluate the privilege or protection asserted,
`
`including author(s); recipient(s); sender(s); date; general subject matter; and the privilege or
`
`protection that is claimed.
`
`5
`
`

`

`Case 1:16-cv-00455-RGA Document 43 Filed 02/03/17 Page 12 of 20 PageID #: 2217
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`8.
`
`These Requests are submitted for the purpose of discovery and are not to be taken
`
`as waiving any objections that may be made at trial to the introduction of evidence on subjects
`
`covered by these Requests or as an admission of the relevance or materiality at trial of any of the
`
`matters covered by these Requests.
`
`9.
`
`Pursuant to Fed. R. Civ. P. 26(e)(2), these Requests shall be deemed continuing so
`
`as to require further and supplemental production by you in the event that you or any person
`
`acting on your behalf, obtains or discovers additional documents or information that may
`
`augment or otherwise modify your responses hereto, between the time of initial production and
`
`the time of any trial in these Cases.
`
`REQUESTS FOR PRODUCTION
`
`1.
`
`All Documents referring or relating to Acceleration Bay including but not limited
`
`to communications and emails between Boeing and Acceleration Bay regarding the Asserted
`
`Patents, the technology allegedly claimed by the Asserted Patents, or any agreements between
`
`Boeing and Acceleration Bay.
`
`2.
`
`All Documents referring or relating to Panthesis including but not limited to
`
`communications and emails between Boeing and Panthesis regarding the Asserted Patents, the
`
`technology allegedly claimed by the Asserted Patents, or any agreements between Boeing and
`
`Panthesis.
`
`3.
`
`All Documents referring or relating to the preparation, filing, and/or prosecution
`
`of any of the patents applications from which any of the Asserted Patents issued.
`
`4.
`
`All Documents by the Named Inventors referring or relating to any alleged
`
`invention claimed or disclosed in the Asserted Patents, including but not limited to notebooks,
`
`technical files, reports, drawings, plans, diaries, e-mails, memoranda, and calendars.
`
`6
`
`

`

`Case 1:16-cv-00455-RGA Document 43 Filed 02/03/17 Page 13 of 20 PageID #: 2218
`
`5.
`
`All Documents by Robert Abarbanel and/or Scott Smith referring or relating to
`
`any alleged invention claimed or disclosed in the Asserted Patents, including but not limited to
`
`notebooks, technical files, reports, drawings, plans, diaries, e-mails, memoranda, and calendars.
`
`6.
`
`All Documents referring or relating to any alleged invention claimed or disclosed
`
`in the Asserted Patents, including but not limited to notebooks, technical files, reports, drawings,
`
`plans, diaries, e-mails, memoranda, and calendars.
`
`7.
`
`All Documents referring or relating to “Small-world Wide Area Networks” or
`
`“Scalable Wide-Area Network” solution or SWAN technology.
`
`8.
`
`All Documents referring or relating to conception or reduction to practice of any
`
`alleged invention claimed or disclosed in the Asserted Patents.
`
`9.
`
`All Documents referring or relating to any of the following activities with regard
`
`to the subject matter of any Asserted Patents:
`
`a.
`b.
`c.
`d.
`e.
`f.
`g.
`h.
`i.
`
`first written description and/or drawing of such subject matter;
`first publication of such subject matter;
`first promotion of such subject matter;
`first advertisement of such subject matter;
`first offer for sale of such subject matter;
`first sale of such subject matter;
`first availability to the public of knowledge of such subject matter;
`first public use of such subject matter; and
`all experimental uses or alleged experimental uses of such subject matter.
`
`10.
`
`All Documents including emails referring or
`
`relating to communications
`
`internally at Boeing about the Asserted Patents, any Related Applications, the technology of the
`
`Asserted Patents, infringement of the Asserted Patents, or the validity of the Asserted Patents.
`
`11.
`
`All Documents including emails referring or relating to communications with
`
`third-parties including but not limited to the Named Inventors, Robert Abarbanel, Scott Smith,
`
`Hamilton Capital XXI LLC, Sony Computer Entertainment America Inc., McKinsey &
`
`7
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`

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`Case 1:16-cv-00455-RGA Document 43 Filed 02/03/17 Page 14 of 20 PageID #: 2219
`
`Company, Acorn Technologies, Inc., Global IP Law Group, RPX Corporation, Open Inventions
`
`Network, Intellectual Ventures, Google, and Microsoft about the Asserted Patents, any Related
`
`Applications, the technology of the Asserted Patents, infringement of the Asserted Patents, or the
`
`validity of the Asserted Patents.
`
`12.
`
`All Documents referring or relating to agreements about the Asserted Patents or
`
`any Related Applications.
`
`13.
`
`All Documents referring or relating to communications, emails, discussions,
`
`negotiations, agreements, review, or analysis about the Asserted Patents or any Related
`
`Applications with any third party including but not limited to Sony Computer Entertainment
`
`America Inc., Acorn Technologies, Inc., Global IP Law Group, RPX Corporation, Open
`
`Inventions Network, Intellectual Ventures, Google, and Microsoft.
`
`14.
`
`All Documents referring or reflecting due diligence, research, investigation, or
`
`any other efforts to value or price any of the Asserted Patents or any Related Applications,
`
`whether individually or as part of a patent portfolio, and whether by You or anyone else;
`
`15.
`
`All Documents referring or reflecting any offers, discussions, communications,
`
`emails, and negotiations (whether or not consummated) to license, wholly or in part, cross-
`
`license, buy, sell, loan, assign, covenant not to sue, or grant a security interest or rights in any of
`
`the Asserted Patents or any Related Applications (whether individually or as part of a patent
`
`portfolio).
`
`16.
`
`All Documents regarding any video game company, including any of the
`
`Defendants relating in any way to the Asserted Patents or any Related Applications;
`
`17.
`
`All Documents reflecting or referring to infringement charts, claim charts, prior
`
`art, invalidity or validity studies or any documents reflecting an analysis of whether any of the
`
`8
`
`

`

`Case 1:16-cv-00455-RGA Document 43 Filed 02/03/17 Page 15 of 20 PageID #: 2220
`
`Asserted Patents are or are not infringed by anyone, including the Defendants or whether any of
`
`the Asserted Patent are or are not valid.
`
`18.
`
`Documents sufficient to identify products and services allegedly covered by any
`
`of the Asserted Patents.
`
`19.
`
`Documents sufficient to describe the use of any alleged invention claimed or
`
`disclosed in the Asserted Patents in Boeing’s Genesis, FlyThru, TeleFly, or Kirts systems.
`
`20.
`
`All Documents relating to Boeing’s use, sale or offer to sell any products or
`
`services allegedly covered by any Asserted Patents.
`
`21.
`
`Documents sufficient to identify all licensees of any Asserted Patents and any
`
`licensees’ sale of any products or services allegedly covered by any Asserted Patents.
`
`22.
`
`Documents and things sufficient to show whether Boeing and/or its licensees have
`
`complied with the marking or notice provisions of 35 U.S.C. § 287(a) for the Asserted Patents.
`
`23.
`
`All Documents relating to any agreements relating to the Asserted Patents,
`
`including, but not limited to, assignment agreements, purchase agreements, sales agreements,
`
`license agreements, cross-license agreements, security interest agreements, loan agreements, and
`
`covenants not to sue.
`
`24.
`
`All Documents relating to any negotiation (regardless of whether an agreement
`
`was ever consummated) for any assignment, purchase, sale, license, cross-license, security
`
`interest, loan, or grant of any rights with respect to any Asserted Patents.
`
`25.
`
`All Documents relating to the “transaction that gives Boeing an equity stake in
`
`Panthesis and provides Panthesis with an exclusive right to commercialize Boeing’s Small-world
`
`Wide Area Networking (SWAN) technology.”
`
`9
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`Case 1:16-cv-00455-RGA Document 43 Filed 02/03/17 Page 16 of 20 PageID #: 2221
`
`26.
`
`All Documents relating to the use of open source software in connection with the
`
`Asserted Patents.
`
`27.
`
`All Documents relating to contributions, submissions, proposals, or presentations
`
`made by the Named Inventors regarding the Asserted Patents or any alleged inventions claimed
`
`by the Asserted Patents to any trade association and/or standard settings body.
`
`28.
`
`All Documents relating to contributions, submissions, proposals, or presentations
`
`made by Robert Abarbanel and/or Scott Smith regarding the Asserted Patents or any alleged
`
`inventions claimed by the Asserted Patents to any trade association and/or standard settings
`
`body.
`
`29.
`
`30.
`
`All Documents relating to the valuation of any Asserted Patents.
`
`All Documents concerning any diligence, investigation or research performed by
`
`or for Acceleration Bay referring or relating to the Asserted Patents.
`
`31.
`
`All Documents concerning any diligence, investigation or research performed by
`
`or for Panthesis referring or relating to the Asserted Patents.
`
`32.
`
`All Documents concerning any disclosure of the inventions claimed in the
`
`Asserted Patents or of the SWAN or Small-world Wide Area Networks technology to Data
`
`Connections, Ltd., IBM, or Dassault.
`
`33.
`
`All non-disclosure agreements or NDAs with Data Connections, Ltd., IBM, or
`
`Dassault.
`
`34.
`
`All Documents from any SWAN meetings or demonstrations including but not
`
`limited to meetings held on September 1, 2000.
`
`10
`
`

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`Case 1:16-cv-00455-RGA Document 43 Filed 02/03/17 Page 17 of 20 PageID #: 2222
`
`35.
`
`All Documents referring or relating to any analysis of the SWAN technology
`
`including the feasibility and utility of the SWAN technology by Ole Bjerg Larsen or any other
`
`Boeing employees.
`
`36.
`
`Documents sufficient to show how many participants used the technology claimed
`
`by the Asserted Patents for Boeing’s Genesis, FlyThru, TeleFly, or Kirts systems.
`
`37.
`
`Documents sufficient to show how many participants used Boeing’s Genesis,
`
`FlyThru, TeleFly, or Kirts systems.
`
`38.
`
`All Documents reflecting meetings or tests shown to Jonathan Grudin of Boeing’s
`
`Genesis, FlyThru, TeleFly, or Kirts systems.
`
`39.
`
`All Documents reflecting or referring to participants’ or third-parties’ reviews or
`
`analysis of the technology claimed by the Asserted Patents for Boeing’s Genesis, FlyThru,
`
`TeleFly, or Kirts systems.
`
`40.
`
`All Documents reflecting or referring to how SW