Case 1:14-cv-02396-PGG-MHD Document 176-8 Filed 10/01/19 Page 1 of 5
`Case 1:14-cv-02396—PGG-MHD Document 176-8 Filed 10/01/19 Page 1 of 5
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` EXHIBIT H
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`EXHIBIT H
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`Case 1:14-cv-02396—PGG-MHD Document 176-8 Filed 10/01/19 Page 1 of 5
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` EXHIBIT H
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`EXHIBIT H
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`Case 1:18-cv-02624-PGG-GWG Document 31 Filed 04/08/19 Page 1 of 4Case 1:14-cv-02396-PGG-MHD Document 176-8 Filed 10/01/19 Page 2 of 5
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`U P S H A W
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`Upshaw PLLC
`1204 Gano Street
`Dallas, Texas 75215
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`Erik Dykema
`Attorney
`erikdykema@upshawpllc.com
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`VIA ECF
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`8 April 2019
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` Honorable Paul G. Gardephe
`United States District Judge
`United States District Court - Southern District of New York
`40 Foley Square, Room 2204
`New York, New York 10007
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`Re: Mediated Ambiance LLC v. TouchTunes Music Corp., No. 1:18-cv-02624-PGG
` Letter Motion for Infringement and Invalidity Contentions
` Response to TouchTunes’ Letter in Opposition [Dkt. 30]
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`Your Honor:
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`Mediated Ambiance writes to briefly respond to TouchTunes’ letter opposing
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`our request for fulsome invalidity contentions.1
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`TouchTunes’ letter highlights that the parties previously agreed to the
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`schedule, and that the parties are in compliance with the local rules concerning
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`1 TouchTunes styled its letter in opposition as pursuant to §IV(A) of Your Honor’s
`Individual Rules, which concerns “Pre-Motion Conferences.” While Mediated
`Ambiance has no objection to a conference, we believe that the parties’ positions,
`and the relief requested, have been sufficiently and clearly stated in the letters
`(Dkt. 29, 30, and 31) and do not believe that either a conference or additional
`motion briefing is necessary unless the Court would find it helpful.
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`upshawpllc.com
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`Case 1:18-cv-02624-PGG-GWG Document 31 Filed 04/08/19 Page 2 of 4Case 1:14-cv-02396-PGG-MHD Document 176-8 Filed 10/01/19 Page 3 of 5
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`infringement and invalidity contentions. And, Mediated Ambiance agrees—the
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`parties have met the minimum requirements of the rules. But TouchTunes misses
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`the point. The purpose of the Local Patent Rules is to provide notice of the other
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`side’s claims and defenses, streamlining the discovery process and providing the
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`parties a clear path to narrowing issues for trial. The problem in this instance is not
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`that TouchTunes has broken the rules, rather the problem is that Touchtunes has
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`provided so many prior art references without any substantive explanation as to
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`their reads on the asserted patents that the purposes of notice and streamlining are
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`completely thwarted by sheer numbers.
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`TouchTunes’ letter does not dispute that, without more detailed invalidity
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`contentions, TouchTunes’ actual invalidity contentions2 are effectively shielded from
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`the fact discovery process (a majority of the timeline of this case) because the
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`subject matter is not encompassed by document requests, and the numbers of
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`references involved prevent effective deposition. This is exactly the situation that
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`Local Civil Rule 33.3(b) remedies. It provides that “interrogatories . . . may only be
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`served if they are a more practical method of obtaining the information sought than
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`a request for production or deposition.”
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`TouchTunes’ letter shifts the discussion away from Local Civil Rule 33.3(b) to
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`expert discovery, the parties’ agreement on a schedule, and downplays the problem
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`of the inability to take effective, complete discovery. These arguments are red
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`2 E.g. which of the hundreds of references that TouchTunes asserted it will actually present at trial,
`and how those references purportedly map onto the patent claims at issue.
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`Case 1:18-cv-02624-PGG-GWG Document 31 Filed 04/08/19 Page 3 of 4Case 1:14-cv-02396-PGG-MHD Document 176-8 Filed 10/01/19 Page 4 of 5
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`herrings. Mediated Ambiance has no issue with the agreed upon expert discovery
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`schedule. The issue is that, without relief, a large portion of TouchTunes’ case is
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`effectively shielded from discovery for the majority of this schedule, until the expert
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`discovery phase.
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`TouchTunes downplays the fact that Mediated Ambiance will be unable to
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`depose fact or 30(b)(6) witnesses on TouchTunes invalidity case, baldly asserting
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`that “such a deposition would be inappropriate.” This argument by TouchTunes
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`effectively concedes the standard for serving interrogatories under L. Rule 33.3(b) –
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`if depositions are “inappropriate” then written discovery is the only “more practical”
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`way to obtain the information.
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`Likewise, TouchTunes downplays the fact that Mediated Ambiance will be
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`unable to pursue fact discovery into TouchTunes’ invalidity contentions, calling it
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`“speculative, premature, and hypothetical.” This is an incredible statement, coming
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`the very next paragraph after TouchTunes concedes that it will be effectively un-
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`deposable and rejecting TouchTunes’ proposal for more detailed contentions. In
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`other words, TouchTunes argues that Mediated Ambiance is effectively not allowed
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`to obtain fact discovery about what is likely to be TouchTunes’ primary (and
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`perhaps, only) defenses to Mediated Ambiance’s claims.
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`Without more detailed invalidity contentions, which will narrow the issues
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`and allow meaningful fact discovery into TouchTunes’ actual claims, the effective
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`immunity of TouchTunes’ invalidity case from fact discovery is anything but
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`hypothetical. Mediated Ambiance respectfully requests that its motion be granted.
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`Case 1:18-cv-02624-PGG-GWG Document 31 Filed 04/08/19 Page 4 of 4Case 1:14-cv-02396-PGG-MHD Document 176-8 Filed 10/01/19 Page 5 of 5
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`8 April 2019
`Date
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`/Erik Dykema/
`Erik Dykema
`erikdykema@upshawpllc.com
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`Craig L. Uhrich
`craiguhrich@upshawpllc.com
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`Counsel for Plaintiff Mediated
`Ambiance LLC
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` 4
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