`
`By: Richard D. Mc Leod (Reg. No. 46,921)
`rick.mcleod@klarquist.com
`Michael D. Jones (Reg. No. 41,879)
`michael.jones@klarquist.com
`Klarquist Sparkman LLP
`One World Trade Center, Suite 1600
`121 S.W. Salmon Street
`Portland, Oregon 97204
`Telephone: (503) 595-5300
`Facsimile: (503) 595-5301
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`--------------------
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`--------------------
`
`ABB INC.
`Petitioner
`
`v .
`
`ROY-G-BIV CORPORATION
`Patent Owner
`
`--------------------
`
`Trial No. IPR2013-00062 (Joined with IPR2013-00282)
`Patent 6,516,236 B1
`
`
`--------------------
`
`CORRECTED DECLARATION OF STEVEN M. AUVIL
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`
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`1401097/2/CLEVELAND
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`
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`I, STEVEN M. AUVIL, hereby declare and state as follows:
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`1.
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`I am lead counsel for petitioner ABB Inc. in the related district court
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`proceeding, ROY-G-BIV Corporation v. ABB Inc., MEADWESTVACO TEXAS, LP
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`AND MEADWESTVACO CORPORATION, Case No. 6:11-cv-00622 (E.D. Tex,
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`filed November 15, 2011).
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`2.
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`I make this declaration in support of petitioner ABB Inc.’s opposition
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`to patent owner ROY-G-BIV (“RGB”)’s motion to submit supplemental evidence.
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`I am familiar with the facts set forth in this declaration.
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`3.
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`Based on documents produced by RGB in the co-pending litigation
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`with ABB and marked confidential or highly confidential under the litigation
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`protective order (“Litigation PO”), ABB learned that RGB had worked with
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`Compumotor to develop the XMC specification in 1994. Compumotor is a
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`division of Parker-Hannifin, and so ABB served a subpoena on Parker-Hannifin to
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`obtain documents relating to that work. On March 1, 2013, Parker Hannifin
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`produced documents in response to a subpoena served in the litigation, and these
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`documents were marked as confidential under the Litigation PO. On information
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`and belief, RGB’s counsel asked Parker Hannifin to produce the documents
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`marked confidential or highly confidential under the Litigation PO, thereby
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`restricting use of and access to the documents and information contained therein.
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`On further information and belief, RGB’s counsel contended that Parker-Hannifin
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`Declaration of Steven M. Auvil
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`Page 1
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`and Compumotor were still bound by a confidentiality agreement entered into
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`IPR2013-00062
`Patent 6,516,236 B1
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`with RGB in 1994.
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`4.
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`On March 13, 2013, I sent RGB’s counsel Richard Meyer a letter
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`stating that ABB believed that RGB’s counsel requested that Parker Hannifin
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`designate the documents as confidential. A true and correct, redacted copy of this
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`letter is attached as Appendix A. Appendices attached hereto have been
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`highlighted for emphasis.
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`5.
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`Also in this letter, I stated that the confidentiality designation was
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`improper as it related to the Parker Hannifin documents (“PH Documents”). I
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`further stated that the confidentiality designation was improper, related to other
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`documents produced by RGB involving communication between RGB and
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`Compumotor taking place in the 90’s (“ RGB Documents”).
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`6.
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`Also in this letter, I requested that the PH Documents and RGB
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`Documents be de-designated as confidential under the Litigation PO, because they
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`did not properly fall into a protectable category.
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`7.
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`In a letter dated April 15, 2013, RGB litigation counsel Patrick
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`Lafferty responded, refusing to de-designate the requested documents. A true and
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`correct, redacted copy of this letter is attached as Appendix B.
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`8.
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`Also in the letter, RGB took the position that Parker Hannifin was the
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`correct party to contact in order to request de-designation of the PH Documents.
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`9.
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`On April 15, 2013, ABB filed its First Amended Answer and
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`Counterclaims, Dkt. No. 138 in the Litigation. ABB identified Marc McClung as
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`being an unnamed co-inventor based, at least in part on, the PH Documents and
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`RGB Documents discussing Mr. McClung’s contributions. RGB moved to
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`dismiss the counterclaim of unenforceability, and the Court recently denied that
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`motion. Dkt. No. 279 in the Litigation.
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`10. On April 26, 2013, I sent a letter to RGB counsel Richard Meyer,
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`requesting that RGB agree that the parties expand the Litigation PO to include the
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`inter partes review (“IPR”) proceedings. The proposal would have allowed parties
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`to use in the IPR proceedings any relevant confidential business information
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`(“CBI”) produced in the district court litigation. A true and correct copy of this
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`letter is attached as Appendix C.
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`11. On May 3, 2013, RGB counsel Richard Meyer replied by email and
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`rejected the proposal. A true and correct copy of an email thread ending on July
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`23, 2013 is attached as Appendix D.
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`12. On July 19, 2013, I sent Richard Meyer an email stating that Dave
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`Brown’s IPR declaration for the ‘557 patent necessarily made relevant documents
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`produced by RGB in the district court proceeding designated as confidential. I
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`proposed that the parties agree to expand the scope of the Litigation PO to make
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`discovery produced in the district court available in the IPR proceedings. A true
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`and correct copy of this email is found in Appendix D.
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`13. On July 23, 2013, Richard Meyer responded via email and rejected
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`this proposal. A true and correct copy of this email is found in Appendix D.
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`14. On September 10, 2013, I sent RGB’s litigation counsel, Richard
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`Meyer, a letter, again requesting de-designation of the RGB Documents. In this
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`letter I specified several examples of documents that were improperly designated
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`as confidential. A true and correct, redacted copy of this letter is attached as
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`Appendix E.
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`15. On September 23, 2013, I sent a letter to Richard Meyer, noting that
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`RGB submitted to the Patent Trial and Appeal Board (“PTAB”) documents
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`designated as confidential under the Litigation PO, in order to establish a priority
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`date over the references at issue. A true and correct, redacted copy of this letter is
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`attached as Appendix F.
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`16. Also in the September 23 letter, I specifically identified numerous
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`documents designated as confidential under the Litigation PO that should have
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`been produced in the IPR proceeding as they show inconsistent positions taken by
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`RGB.
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`17.
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`In the September 23 letter I also noted RGB’s improper interpretation
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`of their duty to provide routine discovery under Rule 42.51(b)(iii) during an IPR
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`proceeding.
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`18. On September 24, 2013, Richard Meyer responded by letter, and
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`again refused to de-designate any of these old and historical communications.
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`RGB took the position that RGB was not in violation of PTAB Rule
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`42.51(b)(1)(iii), as it was “aware of nothing inconsistent with the positions RGB
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`advanced in the IPR proceedings . . . .” A true and correct copy of this letter is
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`attached as Appendix G.
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`19. On October 4, 2013, I sent a letter in response to Richard Meyer’s
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`September 24 letter, explaining in detail ABB’s position on why certain
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`confidential documents were, and still are, relevant to the IPR proceedings. I
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`further specifically pointed out numerous inconsistent positions RGB took before
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`the district court and the PTAB, and identified the relevant documents. A true and
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`correct, redacted copy of this letter is attached as Appendix H.
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`20. On October 5, 2013, Richard Meyer replied to my letter of October 4
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`via email and agreed to let ABB question Mr. Brown in the IPR proceeding using
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`documents identified in an October 3, 2013 email from Rick McLeod to Rich
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`Black. Mr. Meyer further agreed to produce these documents in the IPR on a
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`conditional basis. A true and correct copy of the October 5, 2013 email is
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`attached as Appendix I. On information and belief, a true and correct copy of the
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`October 3, 2013 email is attached as Appendix J.
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`21. On December 23, 2013, I sent another letter to RGB’s litigation
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`counsel, and again requested de-designation of the RGB Documents, and several
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`additional documents that also related to 1994 communications between
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`Compumotor and RGB. I further requested that RGB confirm that it would not
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`claim confidentiality in any of the PH Documents. A true and correct, redacted
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`copy of this letter is attached as Appendix K.
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`22. On January 10, 2014, in response to follow-up emails from me to
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`counsel for RGB, counsel for RGB Patrick Lafferty finally replied and de-
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`designated some of the documents that were the subject of my December 23, 2013
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`letter. This response ignored ABB’s request regarding the PH Documents, and
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`failed to de-designate some of the RGB Documents. A true and correct, redacted
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`copy of this email correspondence is attached as Appendix L.
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`23. Also in his response email, with respect to some documents, Mr.
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`Lafferty stated that it would not oppose de-designation if ABB obtained
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`permission to de-designate the document from the third-party to whom RGB owed
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`“non-disclosure obligations.”
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`24. RGB’s failure to de-designate some documents until January 2014
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`hindered ABB’s ability to communicate with Mr. McClung (and other
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`Compumotor witnesses), as the documents were relevant to his participation in the
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`RGB and Compumotor collaboration effort to develop a WOSA-based motion
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`control specification, which would eventually become the XMC specification (the
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`“Collaboration”).
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`25. For example, a memo regarding an April 1994 meeting between
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`Compumotor and RGB relates to the Collaboration and was included in the PH
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`Documents. It was not clear that RGB would not assert confidentiality to this
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`document until at least January 10, 2014, when they remained silent to ABB’s
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`request.
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`26. Many RGB Documents were not de-designated at this time, including
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`emails between Dave Brown and Mr. McClung related to the Collaboration. ABB
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`also could not show Mr. McClung these emails outside of a deposition setting
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`without RGB first de-designating these documents.
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`27. On January 20, 2014, I sent a letter responding to RGB’s partial de-
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`designation of documents, and pointed out the inconsistency in RGB’s position on
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`confidentiality of certain documents, based on RGB’s use of these documents to
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`support their claim of priority in the IPR proceeding. A true and correct, redacted
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`copy of this letter is attached as Appendix M.
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`28. Also in the January 20, 2014 letter, I requested de-designation of other
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`documents relating to communications between Compumotor and RGB from the
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`mid 90’s.
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`29.
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`In a January 20, 2014 email, Patrick Lafferty responded, stating that
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`RGB would consider the requests. I followed up with an email that same day to
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`press for the response. A true and correct copy of these emails is attached as
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`Appendix N.
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`30. RGB has still not acted on ABB’s January 20, 2014 letter or follow-up
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`email.
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`31. On March 24, 2014, I sent RGB’s litigation and IPR counsel an email,
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`requesting that RGB serve any and all “relevant information that is inconsistent
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`with” RGB’s position that Mr. McClung is not a co-inventor of claimed subject
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`matter. A true and correct copy of this email found in Appendix O.
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`32. Also in the March 24 email, I stated that ABB believed that RGB was
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`in violation of Rule 42.51(b)(1)(iii) based on deposition testimony of Mr. Brown
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`in the co-pending litigation with ABB and exhibits introduced during his
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`deposition. RGB marked these materials as confidential, and did not produce
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`them as part of routine discovery in this proceeding.
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`33. On March 24, 2014, Richard Meyer sent an email response in which
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`he denied that RGB was obligated to produce any of these documents in the IPR
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`proceedings. A true and correct copy of this response is found in Appendix O.
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`34. Also in Mr. Meyer’s March 24 email, RGB conditioned the de-
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`designation of documents or consent to filing on specific identification of
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`documents and testimony, putting the onus on ABB to identify inconsistencies.
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`35. On March 24, 2014, I sent another email to Richard Meyer, stating
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`that the issue of inventorship was brought into the IPR proceeding when RGB
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`alleged “independent corroboration” based on Mr. McClung’s deposition
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`testimony. A true and correct copy of this email is found in Appendix O.
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`36. Also in this March 24 email, I requested that RGB de-designate
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`testimony from the second day of Dave Brown’s deposition in the co-pending
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`litigation (February 12, 2014), and various documents cited during the deposition.
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`On that day, I examined Mr. Brown at length about the contributions of Mr.
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`McClung to the XMC specification and documents pertaining to same. This
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`testimony and the documents are inconsistent with RGB’s position that Mr.
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`McClung “independently corroborated” Mr. Brown’s invention.
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`37. On March 25, 2014, Richard Meyer sent an email in reply to my
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`second March 24 email, and stated that RGB would not consider de-designating
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`Mr. Brown’s transcript from the co-pending litigation unless ABB identified by
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`specific pages of the testimony. Also in this email, Mr. Meyer stated that RGB
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`would consider de-designating the exhibits that were identified. A true and
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`correct copy of this email is found in Appendix O.
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`38. After the close of business on March 25, Richard Meyer wrote me
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`another email and agreed to de-designate some but not all of the Brown deposition
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`exhibits that I specifically identified. Of those Brown deposition exhibits that his
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`client refused to de-designate is Brown Exhibit 25. This document and Mr.
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`Brown’s testimony about Brown Exhibit 25 are inconsistent with RGB’s position
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`with Mr. McClung’s deposition testimony is “independent corroboration” of the
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`alleged inventive activities of Mr. Brown. On behalf of RGB, Mr. Meyer, who
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`defended Mr. Brown’s deposition, has refused to declassify this testimony or
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`Brown Exhibit 25, and he has refused to allow me to share the same with Rick
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`McLeod without signing the Litigation PO, which would then impede Mr.
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`McLeod from representing ABB in this proceeding. A true and correct copy of
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`this email is found in Appendix O.
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`39.
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`In the district court litigation, ABB has pending inequitable conduct
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`counterclaims, based in part on Mr. McClung’s participation in the Collaboration.
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`40. To support these pending inequitable counterclaims, ABB relies in
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`part on the RGB Documents, which were produced by RGB and have RGB Bates
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`numbers.
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`41. ABB’s answer and subsequent amended answers are under seal
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`because RGB asserts that the RGB Documents are confidential under the
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`Litigation PO.
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`42. The Litigation PO states: “In the case of deposition upon oral
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`examination or written questions, such testimony shall be deemed
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`‘CONFIDENTIAL’ until the expiration of thirty (30) days after the deposition
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`unless otherwise designated at the time of the deposition or during the thirty (30)
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`day period.” ABB could not present this testimony to the Board earlier than April
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`13, 2014, absent waiver of confidentiality by RGB, which occurred when RGB
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`IPR2013-00062
`Patent 6,516,236 B1
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`filed the McClung transcript and exhibits.
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` declare that all statements made herein of my own knowledge are true and
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` I
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`that all statements made on information and belief are believed to be true, and
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`further that these statements were made with the knowledge that willful false
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`statements and the like so made are punishable by fine or imprisonment, or both,
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`under Section 1001 of Title 18 of the United States Code, and that such willful
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`false statements may jeopardize the validity of the application or any patent issued
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`thereon.
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`Date: Mm-ch'._l__(g, 2014
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`Case IPRZOI3-00062
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`Patent 6,516,236 B1
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`bw {T/L
`
`Steven M. Auvil
`
`Page 12
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`
`
`Appendix A
`
`
`
`Squire Sanders (US) LLP
`4900 Key Tower
`127 Public Square
`Cleveland, Ohio 44114
`
`O +1 216 479 8500
`F +1 216 479 8780
`squiresanders.com
`
`Steven M. Auvil
`T +1 216 479 8023
`steven.auvil@squiresanders.com
`
`March 13, 2013
`
`Via email only
`Richard S. Meyer
`Boise, Schiller & Flexner LLP
`5301 Wisconsin Avenue, N.W.
`Washington, DC 20015
`
`ROY-G-BIV Corp. v. ABB, Ltd. et al. (Lead Case)
`Re:
`Case Nos. 6:11-cv-00622-00624-LED (E.D.Tex.)
`
`Richard:
`
`As you are aware, we received documents from Parker-Hannifin Corporation (“Parker-
`Hannifin”) on March 1, 2013 in response to a subpoena (PARKER0001-53) (hereinafter, the
`“Parker-Hannifin documents”). The Parker-Hannifin documents are marked “Highly
`Confidential-Outside Counsel Eyes Only.” We have reason to believe that counsel for ROY-G-
`BIV instructed Parker-Hannifin to mark the documents in this manner and we are unclear of the
`basis for the request. Moreover, it is unclear to us why RGB has likewise designated its
`documents with the same confidentiality designation given the many years since the parties
`were in a confidential relationship and the confidentiality protections agreed to during that
`confidential relationship expired.
`
`As you know, parties are required under the Protective Order (“PO”) entered in this case
`to make “good faith” designations regarding confidentiality of documents. See Doc. 107,
`paragraph 3. Paragraph 2(b) of the PO states that the “Highly Confidential-Outside Counsel
`Eyes Only” designation applies only to:
`
`(1) current business/strategic plans, (2) sales, cost and price
`information including future sales/financial projections, (3) non-
`public marketing information including future marketing plans, (4)
`detailed sales and financial data that includes costs and profits
`information,
`(5) customer
`lists,
`(6)
`flow charts, product and
`program specifications, and similar documents, and (7) other non-
`public information of business, commercial, competitive, financial,
`marketing, sales and technical significance comparable to the
`items listed in this paragraph.
`
`Doc. 107.
`
`39 Offices in 19 Countries
`Squire Sanders (US) LLP is part of the international legal practice Squire Sanders which operates worldwide through a number of separate legal
`entities.
`
`Please visit squiresanders.com for more information.
`
`CLEVELAND/1335233.2
`
`
`
`Squire Sanders (US) LLP
`
`March 13, 2013
`
`The Parker-Hannifin documents do not fall under any of these categories. We note in
`this regard that any protection of confidential information exchanged between ROY-G-BIV and
`Parker-Hannifin in connection with the
`
`. In other words, Parker
`and RGB agreed that no confidentiality applied to documents exchanged under the NDA after
`April 6, 1996, nearly 17 years ago. For this reason alone, it is inappropriate for such documents
`to be designated confidential under any level of protection provided by the PO.
`
`In accordance with paragraph 17 of the PO, ABB is challenging the designation of the
`Parker-Hannifin documents, as well as certain ROY-G-BIV documents, and requests that you
`withdraw the confidentiality designations for any and all production documents communicated to
`Parker-Hannifin, including, but not limited to GB00055852, RGB00055881, RGB00055896,
`RGB00052838, RGB00052928, RGB00056597, RGB00052815, and documents exchanged
`between Goodnick and Brown, including, but not limited to RGBINSP00003901,
`RGBINSP00003888, RGBINSP00003889, RGBINSP00003892, RGBINSP00003894.
`
`Please respond to this letter no later than March 20, 2013.
`
`Sincerely,
`
`Squire Sanders (US) LLP
`
`Steven M. Auvil
`
`cc: Plaintiff’s Counsel
`
`CLEVELAND/1335233.2
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`2
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`
`
`Appendix B
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`
`
` S C H I L L E R & F L E X N E R L L P
`B O I E S ,
`5 3 0 1 W i s c o n s i n A v e n u e N . W . * W a s h i n g t o n , D C 2 0 0 1 5 - 2 0 1 5 * P H 2 0 2 . 2 3 7 . 2 7 2 7 * F A X 2 0 2 . 2 3 7 . 6 1 3 1
`
`April 15, 2013
`
`VIA FELECTRONIC MAIL
`
`Steven M. Auvil
`Squire Sanders (US) LLP
`4900 Key Tower
`127 Public Square
`Cleveland, Ohio 44114
`steven.auvil@squiresanders.com
`
`RE: ROY-G-BIV Corp. v. ABB, Ltd. et al.
`Case No. 6:11-cv-00622-LED (E.D.Tex.)
`
`
`
`
`Dear Steve:
`
`
`This letter responds to your letter of March 13, 2013 regarding your “challenge” to the
`confidentiality designation of certain documents produced by Parker-Hannifin Corporation
`(“Parker”) and similar documents produced by RGB in this case (collectively “the Parker
`Documents”).
`
`First, as an initial matter, you have mischaracterized or misunderstand section 2(b) of the
`Protective Order (Dkt. No. 107). Specifically, you incorrectly allege in your March 13th letter
`that “Paragraph 2(b) of the PO states that the ‘Highly Confidential-Outside Counsel Eyes Only’
`designation applies only to [seven categories of information].” (emphasis in original). But the
`Protective Order clearly and unambiguously states that “‘CONFIDENTIAL – OUTSIDE
`COUNSEL EYES ONLY’ information shall include, but is not limited to [the seven categories
`of information].” (emphasis added). The Protective Order actually states that “Confidential –
`Outside Counsel Eyes Only” information shall apply:
`
`“to a party’s highly confidential and proprietary business, commercial,
`competitive, financial, marketing, sales and technical information that the
`Disclosing Party reasonably and in good faith believes is so highly sensitive that
`its disclosure to an employee of a Discovering Party would reveal significant
`business, commercial, competitive, financial, marketing, sales or technical
`advantages of the Disclosing Party.”
`
`(Dkt. No. 107 at 2(d)). Thus, your argument that the Parker Documents are somehow
`improperly designated simply because “[t]he Parker-Hannifin documents do not [allegedly] fall
`under any of these [seven] categories [of information]” is incorrect and unjustified. The
`exemplary categories of information were just that – examples – and we reject your attempt to
`rewrite the Protective Order in your March 13th letter.
`
`
`
`
`WWW.BSFLLP.COM
`
`
`
`
`
`Second, your argument that the information in the Parker Documents is somehow public
`information (i.e. not properly designated under any confidentiality) simply because a “Reciprocal
`Non-Disclosure & Confidentiality Agreement” dated May 19, 1994, terminated on April 6,
`1996” is equally as unreasonable. Even if information is not subject to an express NDA, that fact
`alone would not be dispositive of whether the information is “Confidential” or “Confidential –
`Outside Counsels Eyes Only.” Each document, and the information disclosed therein, must be
`considered separately.
`
`Third, we explained in Mr. Meyer’s correspondence of March 18th that, despite your
`incorrect assertions to the contrary, at least two of the Parker Documents1 “challenged” by ABB
`were not marked as “Confidential – Outside Counsel Eyes Only” but were marked as
`“Confidential.”2 In response, you stated in your correspondence of March 20th that you were
`challenging “all documents exchanged between P-H and RGB and designated with any
`confidentiality designation.” But many of the documents you identified, including Parker 0051
`and Parker 0052 (which appear to be internal Parker communications relating to RGB and
`Parker’s confidential business dealings and communications), were never exchanged between
`RGB and Parker. In fact, documents you identified in your March 13th correspondence include,
`for example, internal RGB documents and files that comprise redacted, privileged information
`and/or RGB internal notes and information (e.g. RGB00052815 and RGB00052838). Therefore,
`your request is clearly overbroad and non-specific.
`
`
`
`Fourth, the Parker Documents “challenged” by ABB each include “confidential and
`proprietary business, commercial, competitive, financial, marketing, sales and/or technical
`information” the disclosure of which “would reveal significant business, commercial,
`competitive, financial, marketing, sales or technical advantages of the Disclosing Party.” For
`example:
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`.
`
`;
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`
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`
`1 PARKER 0051 and PARKER 0052.
`
` 2
`
` Under the Protective Order, the term “CONFIDENTIAL” information “shall apply to a party’s confidential and
`nonpublic information, the disclosure of which the producing party contends could cause harm to the business
`operations of the Disclosing Party or provide improper advantage to others.”
`
`
`
`2
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`Fifth, with regard to the documents produced and designated by Parker, RGB cannot
`under the Protective Order in this case unilaterally de-designate those documents. To the extent
`ABB “challenges” the confidentiality designations of those documents, the correct party to
`request de-designation is Parker.
`
`Accordingly, we do not believe that de-designation of the documents you identified is
`appropriate or warranted. If there are any specific documents that you still believe do not
`contain “Confidential” of “Confidential – Outside Counsels Eyes Only” information, please
`provide a specific, non-generalized basis for ABB’s position that these documents are public or
`comprise only public information so that we can better understand your position.
`
`
`Best regards,
`
`/s/ Patrick M. Lafferty
`
`Patrick M. Lafferty
`
`
`(Counsel for ABB Defendants) (via email only):
`Michael E. Jones (mikejones@potterminton.com)
`Allen F. Gardner (allengardner@potterminton.com)
`
` (Counsel for Plaintiff) (via email only):
`Russell A. Chorush (rchorush@hpcllp.com)
`Gregory P. Love (greg@stevenslove.com)
`Adam Q. Voyles (adam@lubelvoyles.com)
`
`3
`
`
`cc:
`
`
`cc:
`
`
`
`
`
`Appendix C
`
`
`
`Squire Sanders (US) LLP
`4900 Key Tower
`127 Public Square
`Cleveland, Ohio 44114
`
`O +1 216 479 8500
`F +1 216 479 8780
`squiresanders.com
`
`Steven M. Auvil
`T +1 216 479 8023
`steven.auvil@squiresanders.com
`
`April 26, 2013
`
`VIA E-MAIL ONLY
`
`Richard S. Meyer
`Partner
`Boies, Schiller & Flexner LLP
`5301 Wisconsin Ave. NW
`Washington, D.C. 20015
`
`Re:
`
`ROY-B-BIV Corp. v. ABB, Inc., 6:11-cv-00622-LED (E.D. Texas)
`
`Dear Richard:
`
`I am writing to request RGB’s agreement that use of any confidential business
`information produced by RGB or ABB in the referenced case may be used in any co-pending
`Inter Partes Review involving the patents in suit, including without limitation Case IPR2013-
`00062 relating to U.S. Patent No. 6,516,236, consistent with the Protective Order.
`
`It is unclear whether the Protective Order entered in the case permits the parties to use
`confidential business information (“CBI”) in a related Inter Partes Review. While the Protective
`Order states that CBI may be used in connection with “related court proceedings,” this phrase is
`not defined but arguably includes Inter Partes Review proceedings pending before the Patent
`Trademark and Appeal Board. Protective Order, paragraph 13. ABB doesn’t want there to be
`any misunderstanding on the matter, which is why we would like RGB’s agreement that the
`Protective Order allows such use, at least as to RGB and ABB.
`
`In all cases, paragraph 22 of the Protective Order permits the parties to agree to a
`modification of the Protective Order. If you do not agree that the Protective Order permits the
`use of CBI from this case in a related Inter Partes Review, please let us know whether you will
`agree to extend the use of CBI to such proceedings as a modification of the Protective Order.
`ABB believes it is absolutely necessary because discovery produced in this case relating to the
`patents in suit is relevant to issues presented to or before to the PTAB. . In addition, extending
`the use of CBI to such proceedings makes good sense, as it will allow both parties to meet their
`obligation to provide routine discovery at the PTAB under 37 CFR § 42.51(b)(1)(iii).
`
`I look forward to hearing from you as soon as possible given the pace of the co-pending
`proceedings.
`
`39 Offices in 19 Countries
`Squire Sanders (US) LLP is part of the international legal practice Squire Sanders which operates worldwide through a number of separate legal
`entities.
`
`Please visit squiresanders.com for more information.
`CLEVELAND/1344574.1
`
`
`
`Squire Sanders (US) LLP
`
`Richard S. Meyer
`April 26, 2013
`
`Thanks you.
`
`Sincerely,
`
`Squire Sanders (US) LLP
`
`Steven M. Auvil
`
`CLEVELAND/1344574.1
`
`2
`
`
`
`Appendix D
`
`
`
`
`From: Richard Meyer [mailto:rmeyer@BSFLLP.com]
`Sent: Tuesday, July 23, 2013 2:36 PM
`To: Auvil, Steven M.
`Cc: Allen Franklin Gardner ; Gregory Love (greg@stevenslove.com); rchorush@hpcllp.com; Patrick
`Lafferty; Jaketic, Bryan J.; Dutra, Jeremy W.; Thuermer, John J.
`Subject: RE: RGB v. ABB
`
`
`Steve,
`
`
`Our response is the same as in our prior email, which I attach for your convenience. Thanks.
`
`
`Richard S. Meyer
`BOIES, SCHILLER & FLEXNER LLP
`202-274-1130
`
`
`From: Auvil, Steven M. [mailto:Steven.Auvil@squiresanders.com]
`Sent: Friday, July 19, 2013 9:20 AM
`To: Richard Meyer
`Cc: Allen Franklin Gardner ; Gregory Love (greg@stevenslove.com); rchorush@hpcllp.com; Patrick
`Lafferty; Jaketic, Bryan J.; Dutra, Jeremy W.; Thuermer, John J.
`Subject: RGB v. ABB
`
`
`Richard,
`
`I see that Dave Brown submitted an extensive declaration in the IPR proceeding
`for the ‘557 patent that purports to swear behind a reference that formed the
`basis of the IPR. Discovery produced by your client in this district court
`proceeding is highly relevant to averments made by Mr. Brown in that declaration
`and should be made available in the ‘557 IPR proceeding.
`
`To keep things simple, ABB proposes to make all discovery produced in this
`district court litigation available for use in the IPR proceedings involving the ‘557
`patent or any other patent in suit on the same terms. In other words, to the
`extent that the discovery involves CBI, the protective order in this case could be
`deemed to extend to the IPR proceedings or expressly amended to extend to
`those proceedings.
`
`I look forward to your response.
`
`
`Steve
`
`
`Steven M. Auvil
`
`
`
`Partner
`steven.auvil@squiresanders.com
`
`
` T
`
` +1 216 479 8023
`O +1 216 479 8500
`F +1 216 479 8780
`M +1 216 570 5162
`
`
`Squire Sanders (US) LLP
`4900 Key Tower
`127 Public Square
`Cleveland, Ohio 44114
`www.squiresanders.com
`
`
`
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