CASE COLLARD
`(303) 352-1116
`collard.case@dorsey.com
`
`September 3, 2020
`
`VIA ELECTRONIC MAIL
`
`CONFIDENTIAL – SUBJECT TO FRE 408
`
`Lisa Chiarini
`Reed Smith LLP
`506 Carnegie Center, Suite 300
`Princeton, NJ 08540-7839
`Email: lchiarini@reedsmith.com
`
`Re: Response to August 25, 2020 Letter
`
`Dear Lisa:
`
`I received your August 25 letter just hours after our phone call earlier that day. In our call
`I asked if Provi would provide revenue information and indicated that Dust Bowl needed that
`information before it could make an offer to resolve this dispute. You said you would discuss it
`with Provi. In light of that conversation, I was surprised by your letter.
`
`Your summary of our call is a self-serving distortion which appears calculated to paint our
`discussions as an offer by Dust Bowl to license its patent. I did not say during our call that “Dust
`Bowl will forego filing an action by Provi’s licensing of Dust Bowl’s U.S. Patent No. 10,467,585
`and the related pending US Serial No. 16/564,087.” I said that Dust Bowl would not make any
`offer without revenue information. Provi declined and accordingly Dust Bowl has not made any
`settlement offer to Provi so far. Dust Bowl has not made an offer to license its patent to Provi or
`anyone else. Dust Bowl might have made an offer if Provi had agreed to provide its revenue
`information, but Provi refused. Provi appears to be trying to characterize our discussions as an
`“offer to license” in an attempt to undermine Dust Bowl’s ability to stop Provi’s infringement via
`injunction. Since an injunction is equitable relief, misleading conduct will not work in Provi’s favor.
`
`Provi’s claims of non-infringement ring hollow. In Provi’s August 25 letter, Provi asserts
`“we believe Dust Bowl’s infringement allegations are without merit.” There is no support or
`analysis. This is a pattern. In Provi’s February 28 response, (in which Provi provides lengthy
`validity analysis based on three separate systems), the next to last sentence of the letter states
`that “Provi’s methods and medium do not in fact infringe the ’585 patent because they lack many
`elements required by a proper construction of its claims.” Again, there is no support or analysis.
`In contrast, on June 18, Dust Bowl provided a detailed claim chart supporting its allegations of
`infringement. Provi has never even attempted to respond to that chart. If Provi had a legitimate
`non-infringement position, it would have made it by now.
`
`Provi’s invalidity arguments fair no better. In its June 18 letter, Dust Bowl distinguished
`each of the three systems identified by Provi (eSkye, SevenFifty, and BevAccess). Provi has not
`identified any issues with that analysis, but provided more information regarding the eSkye
`platform (known as eBots). Provi implies that this new information is prior art. It is not, and the
`
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`PROVI-1007 - Page 1
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`Lisa Chiarini
`September 3, 2020
`Page 2
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`implication is misleading. The two exhibits are not prior art because neither was a printed
`publication accessible to the public. This is decades-old black letter law. A reference is proven
`to be a "printed publication" "upon a satisfactory showing that such document has been
`disseminated or otherwise made available to the extent that persons interested and ordinarily
`skilled in the subject matter or art, exercising reasonable diligence, can locate it." In re Wyer, 655
`F.2d 221, 210 USPQ 790 (CCPA 1981) (quoting I.C.E. Corp. v. Armco Steel Corp., 250 F. Supp.
`738, 743, 148 USPQ 537, 540 (SDNY 1966)). Neither exhibit qualifies. The first exhibit is an
`unpublished, abandoned patent application. It does not even meet the statutory language of 35
`USC § 102(a)(2) which refers to a “patent issued” or an “application for patent published or
`deemed published.” (emphasis added). The second exhibit is a confidential internal memo, not
`a “printed publication” and it is not “accessible to the public.” MPEP § 2128 and case law confirm
`“internal documents intended to be confidential are not printed publications.” Fastship, LLC v.
`United States, 131 Fed. Cl. 592, 619 n. 31 (2017) (concluding that confidential document that was
`never publicly disseminated was not a “printed publication”).
`
`Provi’s letter also contains a baseless attempt to create a duty on Dorsey and Bar Nuvo
`to “investigate” the purported prior art identified by Provi. While there is a duty of disclosure there
`is no duty to investigate. The 17-year-old district court case cited by Provi does not create one.
`The DaimlerChrysler case states that when a party has information about a prior art system, it
`may not excuse a failure to disclose by claiming that the information it has is too unreliable. As
`Mr. Hutz acknowledged on a prior call, there has been no failure to disclose in this case. Dorsey
`and Dust Bowl did in-fact disclose the alleged prior art that Provi identified in the ongoing Dust
`Bowl prosecution. DaimlerChrysler does not create a duty to further investigate prior art
`references that were already disclosed to the patent office, nor does any other authority.
`
`Provi may not continue to infringe on Dust Bowl’s patent. Provi has no good faith basis to
`avoid willful infringement going forward, either under its undisclosed (and likely non-existent) non-
`infringement defense or under its rebutted invalidity arguments. Provi is now on notice that any
`infringement going forward will be willful, especially under the subjective Halo standard. Dust
`Bowl reserves all rights and remedies, including injunctive relief if necessary.
`
`The day after sending the August 25 letter, you emailed and requested “Dust Bowl’s
`demand to settle.” On September 2 you requested that Dust Bowl provide “a reasonable offer to
`settle its claim with Provi” by Friday September 4 noting that “Provi would like to put this behind
`them.” Dust Bowl would also like to put this issue in the past, but in light of Provi’s last letter, any
`future discussions will require the parties to agree to not use these discussions in any future
`proceeding for any purpose. Please confirm whether Provi agrees and if so, then we can have a
`call to discuss resuming these discussions.
`
`Best regards,
`
`Case Collard
`
`PROVI-1007 - Page 2
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