Case 2:22-md-03034-TGB ECF No. 255-18, PageID.19609 Filed 06/20/24 Page 1 of 4
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`Exhibit JJ
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`Exhibit JJ
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`Case 2:22-md-03034-TGB ECF No. 255-18, PageID.19610 Filed 06/20/24 Page 2 of 4
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`From:
`To:
`Cc:
`
`Subject:
`Date:
`
`Conrad Gosen
`Chris Stewart; James F. Smith
`neowireless@caldwellcc.com; Jaye Quadrozzi; [SERVICE] GM/Neo; Service-Honda/Neo; [SERVICE] Tesla/Neo;
`FCA-Neo@Venable.com; FMCL0315L@brookskushman.com; DL Nissan-Neo@jenner.com;
`mhuget@honigman.com; mckeever@bsplaw.com; swaidelich@honigman.com;
`thomas.branigan@bowmanandbrooke.com; michael.smith@solidcounsel.com; dla-toyota-
`neowireless@us.dlapiper.com
`RE: Re[2]: Neo MDL - Issues for 4/18 Status Conference
`Tuesday, June 18, 2024 6:01:56 PM
`
`Chris -
`
`On the first point, since Neo is the party intending to move on these claims, can you please circulate
`a draft stipulation for review?
`
`On the inventorship/derivation issue, the inequitable conduct claim Defendants are maintaining is
`the one related to the non-disclosure of Project Angel. However, as mentioned before, Defendants
`are pursuing their unclean hands defense as related to the some of the same universe of operative
`facts (e.g., Project Angel), which may touch on issues related to inventorship/derivation.
`
`On the second point, confirmed, Defendants are not pursuing the standing/ownership defense,
`except again, to the extent that facts related to ownership are relevant to Defendants’ unclean
`hands defense.
`
`Finally, on the unclean hands/inequitable conduct issue – As mentioned above, Defendants agree
`that their claims for those theories are based on some of the same operative facts related to Project
`Angel, but are not necessarily coextensive with one another.
`
`On an unrelated note, Defendants intend to seek leave to file portions of their forthcoming
`dispositive motions and exhibits thereto under seal (wherever they cite or include material that a
`party has designated as confidential). Can you please confirm that Neo does not oppose the sealing
`motions?
`
`Thanks,
`
`Conrad Gosen :: Principal :: Fish & Richardson P.C.
`612 766 2017 direct :: gosen@fr.com
`fr.com :: Bio :: LinkedIn :: Twitter
`
`
`
`From: Chris Stewart <cstewart@caldwellcc.com>
`Sent: Monday, June 17, 2024 3:55 PM
`To: Conrad Gosen <gosen@fr.com>; James F. Smith <jsmith@caldwellcc.com>
`Cc: neowireless@caldwellcc.com; Jaye Quadrozzi <quadrozzi@ygqlaw.com>; [SERVICE] GM/Neo
`<SERVICEGMNeo@fr.com>; Service-Honda/Neo <Service-Honda/Neo@fr.com>; [SERVICE] Tesla/Neo
`
`
`
`Case 2:22-md-03034-TGB ECF No. 255-18, PageID.19611 Filed 06/20/24 Page 3 of 4
`
`<SERVICETeslaNeo@fr.com>; FCA-Neo@Venable.com; FMCL0315L@brookskushman.com;
`DL_Nissan-Neo@jenner.com; mhuget@honigman.com; mckeever@bsplaw.com;
`swaidelich@honigman.com; thomas.branigan@bowmanandbrooke.com;
`michael.smith@solidcounsel.com; dla-toyota-neowireless@us.dlapiper.com
`Subject: RE: Re[2]: Neo MDL - Issues for 4/18 Status Conference
`
`Conrad, thanks. Will your side prepare a joint motion/stipulation dismissing those? Also a
`couple clarifying questions for that stip and to make sure we’re briefing just the disputed
`issues:
`
`
`1. By not pursuing inventorship/derivation, can I assume you’re also not pursuing an
`IEC/unclean hands theory premised on the same? Ie – am I right that the only remaining
`IEC defense is premised on alleged non-disclosure of Project Angel as prior art (as
`opposed to misrepresentation/non-disclosure re inventorship)?
`2. Apologies for omitting it in our earlier list, but can you confirm whether Defendants are
`pursuing a standing/ownership defense, which we also intend to move on if still in play?
`I meant to ask about that in connection with IEC, and I have the same question as above
`re IEC premised on misrepresentation/non-disclosure re ownership. I’m happy to jump
`on the phone and confer if this is still in dispute.
`3. Could you point us to the specific portion of your pleading or contentions that describes
`the non-IEC unclean hands defense, and the relief sought (eg, unenforceability or just
`dismissal of the suit)? Or if someone who knows the defense well and the delta between
`it and IEC could call me, that would work.
`
`
`Thanks,
`Chris
`
`Chris Stewart | Caldwell Cassady Curry PC
`214.888.4846
`
`From: Conrad Gosen <gosen@fr.com>
`Sent: Monday, June 17, 2024 1:16 PM
`To: James F. Smith <jsmith@caldwellcc.com>; Chris Stewart <cstewart@caldwellcc.com>
`Cc: neowireless@caldwellcc.com; Jaye Quadrozzi <quadrozzi@ygqlaw.com>; [SERVICE] GM/Neo
`<SERVICEGMNeo@fr.com>; Service-Honda/Neo <Service-Honda/Neo@fr.com>; [SERVICE] Tesla/Neo
`<SERVICETeslaNeo@fr.com>; FCA-Neo@Venable.com; FMCL0315L@brookskushman.com;
`DL_Nissan-Neo@jenner.com; mhuget@honigman.com; mckeever@bsplaw.com;
`swaidelich@honigman.com; thomas.branigan@bowmanandbrooke.com;
`michael.smith@solidcounsel.com; dla-toyota-neowireless@us.dlapiper.com
`Subject: RE: Re[2]: Neo MDL - Issues for 4/18 Status Conference
`
`
`
`
`
`Case 2:22-md-03034-TGB ECF No. 255-18, PageID.19612 Filed 06/20/24 Page 4 of 4
`
`Counsel –
`
`Following up on our meet and confer from Friday, Defendants confirm that they are no longer
`pursuing the following defenses:
`Derivation/improper inventorship;
`Implied waiver/equitable estoppel;
`Breach of FRAND;
`License;
`Patent exhaustion;
`Fraudulent conveyance;
`Prosecution laches;
`Acquiescence;
`Patent misuse; and
`Federal use.
`
`
`Further, Defendants confirm that they are only pursuing their inequitable conduct claim as to
`Project Angel, and not 802.16a. Finally, Defendants’ unclean hands defense is related to some
`of the same facts (Project Angel) as their inequitable conduct claim, but Defendants disagree
`that unclean hands and inequitable conduct fall together.
`
`Thanks,
`
`Conrad Gosen :: Principal :: Fish & Richardson P.C.
`612 766 2017 direct :: gosen@fr.com
`fr.com :: Bio :: LinkedIn :: Twitter
`
`
`
`
`From: James F. Smith <jsmith@caldwellcc.com>
`Sent: Thursday, June 13, 2024 4:35 PM
`To: Conrad Gosen <gosen@fr.com>; cstewart@caldwellcc.com
`Cc: neowireless@caldwellcc.com; Jaye Quadrozzi <quadrozzi@ygqlaw.com>; [SERVICE] GM/Neo
`<SERVICEGMNeo@fr.com>; Service-Honda/Neo <Service-Honda/Neo@fr.com>; [SERVICE] Tesla/Neo
`<SERVICETeslaNeo@fr.com>; FCA-Neo@Venable.com; FMCL0315L@brookskushman.com;
`DL_Nissan-Neo@jenner.com; mhuget@honigman.com; mckeever@bsplaw.com;
`swaidelich@honigman.com; thomas.branigan@bowmanandbrooke.com;
`michael.smith@solidcounsel.com; dla-toyota-neowireless@us.dlapiper.com
`Subject: RE: Re[2]: Neo MDL - Issues for 4/18 Status Conference
`
`Conrad,
`
`Let’s use the following dial-in for tomorrow’s meet and confer at 9:30am CT:
`________________________________________________________________________________
`Microsoft Teams Need help?
`Join the meeting now
`Meeting ID: 260 556 345 150
`
`
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