Case 1:14-cv-02396-PGG-SN Document 191-9 Filed 11/01/19 Page 1 of 31
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`Exhibit I
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`Case 1:14-cv-02396-PGG-SN Document 191-9 Filed 11/01/19 Page 2 of 31
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`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF NEW YORK
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`14 Civ. 2396 (PGG)
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`14 Civ. 9558 (PGG)
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`NETWORK-1 TECHNOLOGIES, INC.,
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`Plaintiff,
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`v.
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`GOOGLE LLC and YOUTUBE, LLC,
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`Defendants.
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`AMSTER ROTHSTEIN & EBENSTEIN LLP’S RESPONSES
`TO DEFENDANTS’ SUBPOENA
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`Pursuant to Rule 45 of the Federal Rules of Civil Procedure, non-party Amster Rothstein
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`& Ebenstein LLP (“ARE”) hereby serves its written responses to Defendants’ Notice of
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`Subpoena to it, dated February 21, 2019, in the above-captioned action.
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`PRELIMINARY STATEMENT
`These responses are made solely for the purposes of this action in response to the
`subpoena. These responses are subject to and without waiver of any objections as to the
`competency, propriety, authenticity, relevancy, materiality, privilege, and admissibility, and to
`any and all other objections on any grounds that would require the exclusion of statements
`contained.
`The following responses are given without prejudice to ARE’s right to produce
`evidence of any subsequently discovered fact or facts that it may later recall or discover. ARE
`further reserves the right to change, amend, or supplement any or all of the matters contained
`in this Response with facts or information that it learns were omitted by inadvertence, mistake,
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`Case 1:14-cv-02396-PGG-SN Document 191-9 Filed 11/01/19 Page 3 of 31
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`or excusable neglect.
`ARE’s response to this subpoena is based upon the facts and information currently
`known and available to it. ARE reserves the right to supplement, amend, modify, or alter its
`responses to the requests and its production in response to the subpoena.
`The assertion of any objection to any of the requests in the subpoena (“Requests”) is
`neither intended as, nor shall in any way be deemed, a waiver of ARE’s right to assert that or any
`other objection at a later date. No incidental or implied admissions are intended by the responses
`below.
`
`GENERAL OBJECTIONS, OBJECTIONS TO DEFINITIONS,
`AND OBJECTIONS TO INSTRUCTIONS
`ARE objects to the Requests to the extent they purport to impose on it obligations
`1.
`that differ from or exceed those required by the Federal Rules of Civil Procedure, the Local Civil
`Rules and the Local Patent Rules of the United States District Court for the Southern District of
`New York (“Local Rules”), or any order or ruling by the Court in this action.
`2.
`ARE objects to the Requests to the extent they request information protected from
`discovery by the attorney-client privilege, the attorney work product doctrine, the mediation
`privilege, common interest privilege, or any other privilege or restriction on discovery. ARE
`will not produce information protected by such privileges or restrictions. Any inadvertent or
`unintentional disclosure of such information shall not be deemed a waiver of any applicable
`privilege. ARE further reserves the right to object that some information is so confidential and
`sensitive that it should not be provided absent additional protections adequate to ensure its
`confidentiality.
`3.
`ARE objects to the Requests to the extent they are vague and ambiguous.
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`2
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`ARE objects to the Requests to the extent they purport to require it to search for
`4.
`information that is not within its possession, custody, or control.
`5.
`ARE objects to the Requests to the extent that any Request therein is overbroad,
`unduly burdensome, oppressive, or may be construed as calling for information not relevant to
`any claim or defense of any party and/or is not proportional to the needs of the case, considering
`among other things the importance of the discovery in resolving the issues and whether the
`burden or expense of the proposed discovery outweighs its likely benefit.
`6.
`ARE objects to the Requests to the extent that any Request therein seeks
`information that is beyond the scope of allowable discovery under the Federal Rules of Civil
`Procedure, including but not limited to Federal Rule of Civil Procedure 26(b).
`7.
`ARE objects to the definition of “you” and “your” to the extent Defendants’
`definition purports to impose duties beyond those imposed by the Federal Rules of Civil
`Procedure, the Local Rules, or any order or ruling by the Court in this action. ARE also objects
`to this definition as unduly burdensome, harassing, oppressive, and overbroad to the extent it
`purports to include individuals and entities other than Amster Rothstein & Ebenstein LLP. ARE
`objects to the definition of “you” and “your” as vague and overbroad with respect to its inclusion
`of “affiliates, parents, divisions, joint ventures, licensees, franchisees, assigns, predecessors and
`successors in interest, and any other legal entities, whether foreign or domestic, that are owned or
`controlled by Amster Rothstein & Ebenstein LLP, and all predecessors and successors in interest
`to such entities, and any entity owned in whole or in part.”
`8.
`ARE objects to the definition of “NETWORK-1” to the extent Defendants’
`definition purports to impose duties beyond those imposed by the Federal Rules of Civil
`Procedure, the Local Rules, or any order or ruling by the Court in this action. Further, ARE
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`objects to the definition of “NETWORK-1” as broader than permissible under Local Rule
`26.3(c)(5). ARE also objects to this definition as unduly burdensome, harassing, oppressive, and
`overbroad to the extent it purports to include entities other than Network-1 Technologies, Inc.
`ARE objects to the definition of “NETWORK-1” as vague and overbroad with respect to its
`inclusion of “affiliates, parents, divisions, joint ventures, licensees, franchisees, assigns,
`predecessors and successors in interest, and any other legal entities, whether foreign or domestic,
`that are owned or controlled by Network-1 Technologies, Inc., and all predecessors and
`successors in interest to such entities, and any entity owned in whole or in part.” Further, ARE
`objects to the definition of “NETWORK-1” as including “without limitation, Network-1 Security
`Solutions, Inc.; Mirror Worlds Technologies, LLC; and Mirror Worlds LLC” as overbroad by
`including entities that are either unrelated to this litigation and/or third parties. ARE will treat
`the term “NETWORK-1” according to the definition set forth in Local Civil Rule 26.3(c)(5).
`9.
`ARE objects to the definition of “PATENT FAMILY” as impermissibly seeking
`discovery outside the scope of this litigation because it purports to encompass patents not
`asserted in this case. ARE will treat the term “PATENT FAMILY” as referring to the
`“PATENTS-IN-SUIT” as defined in Paragraph 4 of the “Definitions” section of the subpoena.
`10.
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`ARE objects to the definition of “PRIOR ART” to the extent the definition
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`includes “publications, patents, physical devices, prototypes, uses, sales, and offers for sale, and
`any DOCUMENTS or other items” that are not within the scope of 35 U.S.C. §§ 102 and 103.
`11.
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`ARE objects to the definitions of “NETWORK-1/GOOGLE PROCEEDINGS” to
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`the extent the definition includes matters that are unrelated to the litigation here. In particular,
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`ARE objects to the inclusion of Google Inc. v. Network-1 Technologies, Inc., IPR2015-00343
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`(P.T.A.B.) and Google Inc. v. Network-1 Technologies, Inc., IPR2015-00348 (P.T.A.B.) because
`these proceedings involved patents no longer asserted in this action.
`12.
`ARE objects to the definition of “INFRINGE” and “INFRINGEMENT” to the
`extent the definition includes infringement claims that are outside the scope of this case and thus
`not relevant to the litigation.
`13.
`ARE objects to the definition of “Reflect,” “reflecting,” “relate to,” “refer to,”
`“relating to,” and “referring to” to the extent it places obligations on it beyond the scope of the
`Federal Rules of Civil Procedure and the Local Rules.
`14.
`ARE objects to the “INSTRUCTIONS” to the extent the “INSTRUCTIONS”
`place obligations on it that go beyond those required under the Federal Rules of Civil Procedure,
`Local Rules, or any applicable Court order. ARE further objects to Defendants’
`“INSTRUCTIONS” as requiring it to provide information beyond the scope permitted under
`Local Rules 26.3(c)(3)-(4).
`15.
`ARE objects to the Requests to the extent they seek confidential business
`information and/or trade secrets not otherwise protected by a protective order.
`16.
`ARE objects to the Requests to the extent that they require it to disclose
`information in violation of a legal or contractual obligation of nondisclosure to a third party.
`17.
`ARE objects to the Requests to the extent that they seek information that is
`available from public sources, more conveniently or less expensively obtained from another
`source including one or more of the parties to this action, or otherwise just as available to
`Defendants as it is to it. In particular, ARE objects to the production of materials it has
`previously provided to Network-1 in connection with this action, including but not limited to
`documents responsive to Defendants’ Request for Production No. 66 to Network-1. It is ARE’s
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`Case 1:14-cv-02396-PGG-SN Document 191-9 Filed 11/01/19 Page 7 of 31
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`understanding that Network-1 has already produced non-privileged, non-work product, relevant
`documents in its possession, custody, or control to Defendants. ARE will not re-produce such
`materials, as such a production is overly burdensome, particularly for a non-party, and
`unnecessarily seeks duplicative discovery of materials already in Defendants’ possession.
`18.
`Pursuant to Federal Rule of Civil Procedure 26(b)(2)(B), ARE objects to the
`Requests seeking electronically stored information that is not reasonably accessible because of
`the undue burden and cost associated with retrieving and producing such information.
`Electronically stored information that is not reasonably accessible will not be preserved and such
`sources will not be searched in responding to these Requests.
`19.
` To the extent that ARE responds to any Request, its responses reflect only its
`current state of knowledge, understanding, and belief with regard to matters about which inquiry
`has been made. ARE reserves the right to modify or supplement its responses at a later time with
`whatever pertinent information it may subsequently discover.
`RESPONSES AND OBJECTIONS TO DOCUMENT REQUESTS
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`REQUEST NO. 1:
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`All DOCUMENTS that reflect, refer to, or relate to the preparation, drafting,
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`filing, or prosecution of all applications that led to the PATENTS-IN-SUIT.
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`RESPONSE TO REQUEST NO. 1:
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`In addition to the foregoing General Objections, Objections to Definitions, and
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`Objections to Instructions, which are incorporated by reference as fully set forth herein, ARE
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`objects to this Request as overly broad and unduly burdensome as it seeks discovery not relevant
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`to this litigation. ARE further objects to this Request because it seeks information that is
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`available from public sources, more conveniently or less expensively obtained from another
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`Case 1:14-cv-02396-PGG-SN Document 191-9 Filed 11/01/19 Page 8 of 31
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`source including one or more of the parties to this action including without limitation Network-1,
`or is otherwise just as available to Defendants as it is to it. ARE also objects to this Request as
`vague, ambiguous, and overbroad because it seeks “[a]ll DOCUMENTS that reflect, refer to, or
`relate to the preparation, drafting, filing, or prosecution of all applications that led to the
`PATENTS-IN-SUIT.” Additionally, ARE objects to this Request to the extent it calls for
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`documents protected from disclosure by the attorney-client privilege, work product doctrine,
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`common interest privilege, or other applicable privilege. ARE also objects to the extent this
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`Request seeks information not reasonably available to it and to the extent it seeks confidential
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`third-party information.
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`Subject to and without waiver of the foregoing General Objections, Objections to
`Definitions, Objections to Instructions and Specific Objections, ARE states that it has already
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`provided any documents in its custody and control that are responsive to this Request that could
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`be located after a reasonable search to Network-1, including publicly filed documents related to
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`the PATENTS-IN-SUIT, as well as the Private PAIR files for the PATENTS-IN-SUIT. ARE
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`understands that Network-1 has already produced any non-privileged, non-work product,
`responsive documents to Defendants. ARE will not re-produce such materials in response to this
`Request, as such a production is overly burdensome, particularly for a non-party, and
`unnecessarily seeks duplicative discovery of materials already in Defendants’ possession.
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`REQUEST NO. 2:
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`ALL DOCUMENTS that reflect, refer to, or relate to the conception, reduction to
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`practice, research, design, development, or testing of the subject matter shown, described,
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`or claimed in the PATENTS-IN-SUIT, including but not limited to laboratory notebooks,
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`inventor notebooks, draft manuscripts or publications, source code, and computer data, as
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`well as the first written description or disclosure (including drawings) and the first
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`prototype of such subject matter.
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`RESPONSE TO REQUEST NO. 2:
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`In addition to the foregoing General Objections, Objections to Definitions, and
`
`Objections to Instructions, which are incorporated by reference as fully set forth herein, ARE
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`objects to this Request because it seeks information that is available from public sources, more
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`conveniently or less expensively obtained from another source including one or more of the
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`parties to this action including without limitation Network-1, or is otherwise just as available to
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`Defendants as it is to it. ARE further objects to the extent this Request seeks information not
`reasonably available to it and to the extent it seeks confidential third-party information. ARE
`also objects to this Request as vague, ambiguous, and overbroad because it seeks “[a]ll
`DOCUMENTS that reflect, refer to, or relate to the conception, reduction to practice, research,
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`design, development, or testing of the subject matter shown, described, or claimed in the
`PATENTS-IN-SUIT . . . .” Moreover, ARE objects to this Request to the extent it seeks a legal
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`conclusion. Additionally, ARE objects to this Request to the extent it calls for documents
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`protected from disclosure by the attorney-client privilege, work product doctrine, common
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`interest privilege, or other applicable privilege.
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`Subject to and without waiver of the foregoing General Objections, Objections to
`Definitions, Objections to Instructions and Specific Objections, ARE states that it has already
`
`provided any documents in its custody and control that are responsive to this Request that could
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`be located after a reasonable search to Network-1, and understands that Network-1 has already
`produced any non-privileged, non-work product, responsive documents to Defendants. ARE will
`not re-produce such materials in response to this Request, as such a production is overly
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`burdensome, particularly for a non-party, and unnecessarily seeks duplicative discovery of
`materials already in Defendants’ possession.
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`REQUEST NO. 3:
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`
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`All DOCUMENTS known or considered as PRIOR ART or potential PRIOR ART or
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`claimed by others to be PRIOR ART, or which show the state of the art, of the subject matter
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`shown, described, or claimed in the patents and applications in the PATENT FAMILY,
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`including but not limited to patents, publications, books, magazines, course materials, or any
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`DOCUMENT reflecting prior knowledge, public uses, public sales or offers for sale, which
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`has a publication date prior to September 13, 2001.
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`RESPONSE TO REQUEST NO. 3:
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`In addition to the foregoing General Objections, Objections to Definitions, and
`
`Objections to Instructions, which are incorporated by reference as fully set forth herein, ARE
`
`objects to this Request as overly broad and unduly burdensome as it seeks discovery not relevant
`
`to this litigation. ARE also objects to this Request because it seeks information that is available
`
`from public sources, more conveniently or less expensively obtained from another source
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`including one or more of the parties to this action including without limitation Network-1, or is
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`otherwise just as available to Defendants as it is to it. Further, this Request impermissibly seeks
`
`discovery outside the scope of this litigation through the inclusion of the defined term “PATENT
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`FAMILY.” ARE will treat the term “PATENT FAMILY” as referring to the “PATENTS-IN-
`
`SUIT.” Additionally, ARE objects to this Request to the extent it calls for documents protected
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`from disclosure by the attorney-client privilege, work product doctrine, common interest
`
`privilege, or other applicable privilege. Moreover, ARE objects to this Request to the extent it
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`seeks a legal conclusion particularly with respect to the request for information relating to
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`“PRIOR ART.”
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`Subject to and without waiver of the foregoing General Objections, Objections to
`Definitions, Objections to Instructions and Specific Objections, ARE states that it has already
`
`provided any documents in its custody and control that are responsive to this Request that could
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`be located after a reasonable search to Network-1, including publicly filed documents related to
`
`the PATENTS-IN-SUIT, as well as the Private PAIR files for the PATENTS-IN-SUIT. ARE
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`understands that Network-1 has already produced any non-privileged, non-work product,
`responsive documents to Defendants. ARE will not re-produce such materials in response to this
`Request, as such a production is overly burdensome, particularly for a non-party, and
`unnecessarily seeks duplicative discovery of materials already in Defendants’ possession.
`
`REQUEST NO. 4:
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`
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`All DOCUMENTS reflecting communications concerning the PRIOR ART or
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`potential PRIOR ART you submitted or considered submitting to the United States Patent
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`Trademark Office in connection with the prosecution of the patents and applications in the
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`PATENT FAMILY.
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`RESPONSE TO REQUEST NO. 4:
`
`In addition to the foregoing General Objections, Objections to Definitions, and
`
`Objections to Instructions, which are incorporated by reference as fully set forth herein, ARE
`
`objects to this Request because it seeks information that is available from public sources, more
`
`conveniently or less expensively obtained from another source including one or more of the
`
`parties to this action including without limitation Network-1, or is otherwise just as available to
`
`Defendants as it is to it. Additionally, ARE objects to this Request to the extent it calls for
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`documents protected from disclosure by the attorney-client privilege, work product doctrine,
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`common interest privilege, or other applicable privilege. ARE further objects to this Request as
`seeking information not relevant to any claim or defense of any party and not proportional to the
`needs of the case, considering among other things the importance of the discovery in resolving
`the issues and whether the burden or expense of the proposed discovery outweighs its likely
`benefit. ARE also objects to this Request as seeking the disclosure of material subject to third-
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`party confidentiality obligations. Further, this Request impermissibly seeks discovery outside
`
`the scope of this litigation through the inclusion of the defined term “PATENT FAMILY.” ARE
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`will treat the term “PATENT FAMILY” as referring to the “PATENTS-IN-SUIT.” In addition,
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`ARE objects to this Request as vague and ambiguous because it refers to “the United States
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`Patent Trademark Office.” ARE will assume Defendants intended to refer to “the United States
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`Patent and Trademark Office.”
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`Subject to and without waiver of the foregoing General Objections, Objections to
`Definitions, Objections to Instructions and Specific Objections, ARE states that it has already
`
`provided any documents in its custody and control that are responsive to this Request that could
`
`be located after a reasonable search to Network-1, including publicly filed documents related to
`
`the PATENTS-IN-SUIT, as well as the Private PAIR files for the PATENTS-IN-SUIT. ARE
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`understands that Network-1 has already produced any non-privileged, non-work product,
`responsive documents to Defendants. ARE will not re-produce such materials in response to this
`Request, as such a production is overly burdensome, particularly for a non-party, and
`unnecessarily seeks duplicative discovery of materials already in Defendants’ possession.
`
`REQUEST NO. 5:
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`
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`All DOCUMENTS that you referenced or reviewed in connection with the preparation,
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`drafting, filing, or prosecution of the patents and applications in the PATENT FAMILY.
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`RESPONSE TO REQUEST NO. 5:
`
`In addition to the foregoing General Objections, Objections to Definitions, and
`
`Objections to Instructions, which are incorporated by reference as fully set forth herein, ARE
`
`objects to this Request because it seeks information that is available from public sources, more
`
`conveniently or less expensively obtained from another source including one or more of the
`
`parties to this action including without limitation Network-1, or is otherwise just as available to
`
`Defendants as it is to it. Additionally, ARE objects to this Request to the extent it calls for
`
`documents protected from disclosure by the attorney-client privilege, work product doctrine,
`
`common interest privilege, or other applicable privilege. ARE also objects to this Request as
`
`seeking the disclosure of material subject to third-party confidentiality obligations. Further, this
`
`Request impermissibly seeks discovery outside the scope of this litigation through the inclusion
`
`of the defined term “PATENT FAMILY.” ARE will treat the term “PATENT FAMILY” as
`
`referring to the “PATENTS-IN-SUIT.”
`
`Subject to and without waiver of the foregoing General Objections, Objections to
`Definitions, Objections to Instructions and Specific Objections, ARE states that it has already
`
`provided any documents in its custody and control that are responsive to this Request that could
`
`be located after a reasonable search to Network-1, including publicly filed documents related to
`
`the PATENTS-IN-SUIT, as well as the Private PAIR files for the PATENTS-IN-SUIT. ARE
`
`understands that Network-1 has already produced any non-privileged, non-work product,
`responsive documents to Defendants. ARE will not re-produce such materials in response to this
`Request, as such a production is overly burdensome, particularly for a non-party, and
`unnecessarily seeks duplicative discovery of materials already in Defendants’ possession.
`
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`REQUEST NO. 6:
`
`
`
`All DOCUMENTS concerning the inventorship or any invention described, disclosed
`
`or claimed in the PATENTS-IN-SUIT, including but not limited to DOCUMENTS regarding
`
`any person considered for inclusion as an inventor, and the contribution of each person
`
`involved in the conception, development, and reduction to practice of the subject matter
`
`claimed as an invention in any of the patents or applications in the PATENTS-IN-SUIT.
`
`RESPONSE TO REQUEST NO. 6:
`
`In addition to the foregoing General Objections, Objections to Definitions, and
`
`Objections to Instructions, which are incorporated by reference as fully set forth herein, ARE
`
`objects to this Request as overly broad and unduly burdensome as it seeks discovery not relevant
`
`to this litigation. ARE further objects to this Request because it seeks information that is
`
`available from public sources, more conveniently or less expensively obtained from another
`
`source including one or more of the parties to this action including without limitation Network-1,
`
`or is otherwise just as available to Defendants as it is to it. ARE also objects to the extent this
`
`Request seeks information not reasonably available to it and to the extent it seeks confidential
`
`third-party information. Additionally, ARE objects to this Request to the extent it calls for
`
`documents protected from disclosure by the attorney-client privilege, work product doctrine,
`
`common interest privilege, or other applicable privilege. Moreover, ARE objects to this Request
`
`to the extent it seeks a legal conclusion.
`
`Subject to and without waiver of the foregoing General Objections, Objections to
`Definitions, Objections to Instructions and Specific Objections, ARE states that it has already
`
`provided any documents in its custody and control that are responsive to this Request that could
`
`be located after a reasonable search to Network-1, and understands that Network-1 has already
`
`
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`produced any non-privileged, non-work product, responsive documents to Defendants. ARE will
`not re-produce such materials in response to this Request, as such a production is overly
`burdensome, particularly for a non-party, and unnecessarily seeks duplicative discovery of
`materials already in Defendants’ possession.
`
`REQUEST NO. 7:
`
`
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`All DOCUMENTS reflecting COMMUNICATIONS with Dr. Ingemar J. Cox relating
`
`to the preparation, drafting, filing, or prosecution of all applications that led to the PATENTS-
`
`IN-SUIT.
`
`RESPONSE TO REQUEST NO. 7:
`
`In addition to the foregoing General Objections, Objections to Definitions, and
`
`Objections to Instructions, which are incorporated by reference as fully set forth herein, ARE
`
`objects to this Request because it seeks information that is available from public sources, more
`
`conveniently or less expensively obtained from another source including one or more of the
`
`parties to this action including without limitation Network-1, or is otherwise just as available to
`
`Defendants as it is to it. ARE additionally objects to this Request to the extent it calls for
`
`documents protected from disclosure by the attorney-client privilege, work product doctrine,
`
`common interest privilege, or other applicable privilege. ARE also objects to this Request as
`
`overbroad, unduly burdensome, and oppressive because it calls for information not relevant to
`
`any party’s claims or defenses and is otherwise not proportional to the needs of the case,
`
`considering among other things the importance of the discovery in resolving the issues and
`
`whether the burden or expense of the proposed discovery outweighs its likely benefit. ARE
`
`further objects to this Request to the extent that it seeks documents or information not currently
`
`in its possession, custody, or control.
`
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`Subject to and without waiver of the foregoing General Objections, Objections to
`Definitions, Objections to Instructions and Specific Objections, ARE states that it has already
`
`provided any documents in its custody and control that are responsive to this Request that could
`
`be located after a reasonable search to Network-1, and understands that Network-1 has already
`produced any non-privileged, non-work product, responsive documents to Defendants. ARE will
`not re-produce such materials in response to this Request, as such a production is overly
`burdensome, particularly for a non-party, and unnecessarily seeks duplicative discovery of
`materials already in Defendants’ possession.
`
`REQUEST NO. 8:
`
`
`
`All patents, printed publications, systems, or products that Ingemar J. Cox provided to
`
`you or identified for you in connection with the preparation, drafting, filing, or prosecution of
`
`all applications that led to the PATENTS-IN-SUIT.
`
`RESPONSE TO REQUEST NO. 8:
`
`In addition to the foregoing General Objections, Objections to Definitions, and
`
`Objections to Instructions, which are incorporated by reference as fully set forth herein, ARE
`
`objects to this Request because it seeks information that is available from public sources, more
`
`conveniently or less expensively obtained from another source including one or more of the
`
`parties to this action including without limitation Network-1, or is otherwise just as available to
`
`Defendants as it is to it. Additionally, ARE objects to this Request to the extent it calls for
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`documents protected from disclosure by the attorney-client privilege, work product doctrine,
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`common interest privilege, or other applicable privilege.
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`Subject to and without waiver of the foregoing General Objections, Objections to
`Definitions, Objections to Instructions and Specific Objections, ARE states that it has already
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`Case 1:14-cv-02396-PGG-SN Document 191-9 Filed 11/01/19 Page 17 of 31
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`provided any documents in its custody and control that are responsive to this Request that could
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`be located after a reasonable search to Network-1, including publicly filed documents related to
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`the PATENTS-IN-SUIT, as well as the Private PAIR files for the PATENTS-IN-SUIT. ARE
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`understands that Network-1 has already produced any non-privileged, non-work product,
`responsive documents to Defendants. ARE will not re-produce such materials in response to this
`Request, as such a production is overly burdensome, particularly for a non-party, and
`unnecessarily seeks duplicative discovery of materials already in Defendants’ possession.
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`REQUEST NO. 9:
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`
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`All DOCUMENTS reflecting COMMUNICATIONS with NETWORK-1 relating to
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`the preparation, drafting, filing, or prosecution of all applications that led to the PATENTS-
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`IN-SUIT.
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`RESPONSE TO REQUEST NO. 9:
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`In addition to the foregoing General Objections, Objections to Definitions, and
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`Objections to Instructions, which are incorporated by reference as fully set forth herein, ARE
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`objects to this Request because it seeks information that is available from public sources, more
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`conveniently or less expensively obtained from another source including one or more of the
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`parties to this action including without limitation Network-1, or is otherwise just as available to
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`Defendants as it is to it. ARE additionally objects to this Request to the extent it calls for
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`documents protected from disclosure by the attorney-client privilege, work product doctrine,
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`common interest privilege, or other applicable privilege. ARE further objects to this Request as
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`seeking the disclosure of material subject to third-party confidentiality obligations. ARE also
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`objects to this Request as overbroad, unduly burdensome, and oppressive because it calls for
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`information not relevant to any party’s claims or defenses and is otherwise not proportional to
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`Case 1:14-cv-02396-PGG-SN Document 191-9 Filed 11/01/19 Page 18 of 31
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`the needs of the case, considering among other things the importance of the discovery in
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`resolving the issues and whether the burden or expense of the proposed discovery outweighs its
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`likely benefit. ARE further objects to this Request to the extent that it seeks documents or
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`information not currently in its possession, custody, or control.
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`Subject to and without waiver of the foregoing General Objections, Objections to
`Definitions, Objections to Instructions and Specific Objections, ARE states that it has already
`
`provided any documents in its custody and control that are responsive to this Request that could
`
`be located after a reasonable search to Network-1, and understands that Network-1 has already
`produced any non-privileged, non-work product, responsive documents to Defendants. ARE will
`not re-produce such materials in response to this Request, as such a