`
`Filed on behalf of ABB, Inc.
`
`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
`
`--------------------
`
`ABB, INC.
`Petitioner
`
`v .
`
`ROY-G-BIV CORPORATION
`Patent Owner
`
`--------------------
`
`Trial No. IPR2013-00062 (joined with IPR2013-00282)
`Patent 6,516,236 B1
`--------------------
`
`DECLARATION OF STEVEN M. AUVIL
`
`
`
`
`1401097/1/CLEVELAND
`
`
`
`

`

`
`
`I, STEVEN M. AUVIL, hereby declare and state as follows:
`
`1.
`
`I am lead counsel for petitioner ABB Inc. in the related district court
`
`proceeding, ROY-G-BIV Corporation v. ABB Inc., MEADWESTVACO TEXAS, LP
`
`AND MEADWESTVACO CORPORATION, Case No. 6:11-cv-00622 (E.D. Tex,
`
`filed November 15, 2011).
`
`2.
`
`I make this declaration in support of petitioner ABB Inc.’s opposition
`
`to patent owner ROY-G-BIV (“RGB”)’s motion to submit supplemental evidence.
`
`I am familiar with the facts set forth in this declaration.
`
`3.
`
`Based on documents produced by RGB in the co-pending litigation
`
`with ABB and marked confidential or highly confidential under the litigation
`
`protective order (“Litigation PO”), ABB learned that RGB had worked with
`
`Compumotor to develop the XMC specification in 1994. Compumotor is a
`
`division of Parker-Hannifin, and so ABB served a subpoena on Parker-Hannifin to
`
`obtain documents relating to that work. On March 1, 2013, Parker Hannifin
`
`produced documents in response to a subpoena served in the litigation, and these
`
`documents were marked as confidential under the Litigation PO. On information
`
`and belief, RGB’s counsel asked Parker Hannifin to produce the documents
`
`marked confidential or highly confidential under the protective order, thereby
`
`restricting use of and access to the documents and information contained therein.
`
`On further information and belief, RGB’s counsel contended that Parker-Hannifin
`
`Declaration of Steven A. Auvil
`
`1401097/1/CLEVELAND
`
`
`
`
`
`Page 1
`
`

`

`
`
`and Compumotor were still bound by a confidentiality agreement entered into
`
`Case IPR2013-00063
`Patent 6,513,058 B2
`
`with RGB in 1994.
`
`4.
`
`On March 13, 2013, I sent RGB’s counsel Richard Meyer an email
`
`stating that ABB believed that RGB’s counsel requested that Parker Hannifin
`
`designate the documents as confidential. A true and correct copy of this email is
`
`attached as Appendix A.
`
`5.
`
`Also in this email, I stated that the confidentiality designation was
`
`improper as it related to the Parker Hannifin documents (“PH Documents”). I
`
`further stated that the confidentiality designation was improper related to other
`
`documents produced by RGB involving communication between RGB and
`
`Compumotor taking place in the 90’s (“ RGB Documents”).
`
`6.
`
`Also in this email, I requested that the PH Documents and RGB
`
`Documents be de-designated as confidential under the Litigation PO, because they
`
`did not properly fall into a protectable category under the protective order.
`
`7.
`
`In a response dated April 15, 2013, RGB litigation counsel Patrick
`
`Lafferty responded, refusing to de-designate the confidentiality designations of the
`
`requested documents. A true and correct copy of this email is attached as
`
`Appendix B.
`
`8.
`
`On April 15, 2013, ABB filed its First Amended Answer and
`
`Counterclaims, Docket #138 in the Litigation. ABB identified Marc McClung as
`
`
`
`1401097/1/CLEVELAND
`
`
`
`Page 2
`
`

`

`Case IPR2013-00063
`Patent 6,513,058 B2
`
`
`
`being an unnamed co-inventor based, at least in part on, the PH Documents and
`
`RGB Documents discussing Mr. McClung’s contributions. RGB moved to
`
`dismiss the counterclaim of unenforceability, and the Court recently denied that
`
`motion. Dkt. # 279 in the Litigation.
`
`9.
`
`Also in this email, RGB took the position that Parker Hannifin was
`
`the correct party to contact in order to request de-designation of the PH
`
`Documents.
`
`10. On April 26, 2013, I sent a response to RGB counsel Richard Meyer,
`
`requesting that RGB agree that the parties expand the Litigation PO to include the
`
`inter partes review (“IPR”) proceedings. The proposal would have allowed parties
`
`to use in the IPR proceedings any relevant confidential business information
`
`(“CBI”) produced in the district court litigation. A true and correct copy of this
`
`email is attached as Appendix C.
`
`11. One month later, on May 3, 2013, RGB counsel Richard Meyer
`
`replied, and rejected the proposal from the April 4, 2013 email. A true and correct
`
`copy of this email is attached as Appendix D.
`
`12. On July 19, 2013, I sent Richard Meyer an email stating that Dave
`
`Brown’s IPR declaration for the ‘557 patent necessarily made relevant documents
`
`produced by RGB in the district court proceeding designated as confidential. I
`
`proposed that the parties agree to expand the scope of the Litigation PO to make
`
`
`
`1401097/1/CLEVELAND
`
`
`
`Page 3
`
`

`

`
`
`discovery produced in the district court available in the IPR proceedings. A true
`
`Case IPR2013-00063
`Patent 6,513,058 B2
`
`and correct copy of this email is found in Appendix D.
`
`13. On July 23, 2013, Richard Meyer responded and refused this
`
`proposal. A true and correct copy of this email is found in Appendix D.
`
`14. On September 10, 2013, I sent RGB’s litigation counsel a letter, again
`
`requesting de-designation of the RGB Documents, and further requested that RGB
`
`confirm that it would not claim confidentiality in any of the PH Documents. In
`
`this letter I specified several examples of documents that were improperly
`
`designated as confidential. A true and correct copy of this letter is attached as
`
`Appendix E.
`
`15. On September 23, 2013, I sent a letter to Richard Meyer, noting that
`
`RGB submitted to the Patent Trial and Appeal Board (“PTAB”) documents
`
`designated as confidential under the Litigation PO, in order to establish a priority
`
`date over the references at issue. A true and correct copy of this letter is attached
`
`as Appendix F.
`
`16. Also in the September 23 letter, I specifically identified numerous
`
`documents designated as confidential under the Litigation PO, which were and are
`
`relevant to the IPR proceeding as they show inconsistent positions that RGB took.
`
`17.
`
`In the September 23 letter I also noted RGB’s improper interpretation
`
`of their duty to disclose documents to the PTAB during an IPR proceeding.
`
`
`
`1401097/1/CLEVELAND
`
`
`
`Page 4
`
`

`

`Case IPR2013-00063
`Patent 6,513,058 B2
`
`
`
`18. On September 24, 2013, Richard Meyer responded, and again refused
`
`to de-designate any of these old and historical communications. RGB took the
`
`position that they were not in violation of PTAB Rule 42.51(b)(1)(iii), and were
`
`“aware of nothing inconsistent with the positions RGB advanced in the IPR
`
`proceedings . . . .” A true and correct copy of this letter is attached as Appendix G.
`
`19. On October 4, 2013, I sent a letter in response to Richard Meyer’s
`
`September 24 letter, explaining in detail ABB’s position on why certain
`
`confidential documents were, and still are, relevant to the IPR proceedings. I
`
`further specifically pointed out numerous inconsistent positions RGB took before
`
`the district court and the PTAB, and identified the relevant documents. A true and
`
`correct copy of this letter is attached as Appendix H.
`
`20. On October 5, 2013, Richard Meyer replied to my letter of October 4
`
`and agreed to let ABB question Mr. Brown in the IPR proceeding using
`
`documents identified on October 3, 2013 in an email from Rick McLeod to Rich
`
`Black. Mr. Meyer further agreed to produce these documents in the IPR on a
`
`conditional basis. A true and correct copy of the October 5, 2013 email is
`
`attached as Appendix I. A true and correct copy of the October 3, 2013 email is
`
`attached as Appendix J.
`
`21. On December 23, 2013, I sent another letter to RGB’s litigation
`
`counsel, and again requested de-designation of the RGB Documents, and several
`
`
`
`1401097/1/CLEVELAND
`
`
`
`Page 5
`
`

`

`Case IPR2013-00063
`Patent 6,513,058 B2
`
`
`
`additional documents that also related to 1994 communications between
`
`Compumotor and RGB. I further requested that RGB confirm that it would not
`
`claim confidentiality in any of the PH Documents. A true and correct copy of this
`
`letter is attached as Appendix K.
`
`22. On January 10, 2014, counsel for RGB Patrick Lafferty replied and
`
`de-designated some of the documents that were the subject of my December 12,
`
`2013 letter. This response ignored ABB’s request regarding the PH Documents,
`
`and failed to de-designate some of the RGB Documents. A true and correct copy
`
`of this email is attached as Appendix L.
`
`23. Also in this email, with respect to some documents, RGB stated that it
`
`would not oppose de-designation if ABB: 1) determine whether any of the
`
`documents were the subject to a “non-disclosure obligation” between RGB and
`
`another third-party, 2) determine the identity of the third-party, 3) determine how
`
`to contact the third-party, and 3) obtain permission to de-designate the document
`
`from the third-party to whom RGB owed a “non-disclosure obligation.”
`
`24. RGB’s failure to de-designate some documents until January 2014
`
`hindered ABB’s ability to communicate with Marc McClung (and other
`
`Compumotor witnesses), as they were relevant to his participation in the RGB and
`
`Compumotor collaboration effort regarding a specification for a WOSA motion
`
`control API/SPI specification (the “Collaboration”).
`
`
`
`1401097/1/CLEVELAND
`
`
`
`Page 6
`
`

`

`Case IPR2013-00063
`Patent 6,513,058 B2
`
`
`
`25. For example, the April 1994 meeting memo relates to the
`
`Collaboration and was included in the PH Documents. It was not clear that RGB
`
`would not assert confidentiality to this document until at January 10, 2014, when
`
`they remained silent to ABB’s request.
`
`26. Many RGB Documents were not de-designated at this time, including
`
`emails between Dave Brown and Marc McClung related to the Collaboration.
`
`ABB also could not show Marc McClung these emails outside of a deposition
`
`setting without RGB first de-designating these documents.
`
`27. On January 20, 2014, I sent a letter responding to RGB’s partial de-
`
`designation of documents, and pointed out the inconsistency in RGB’s position on
`
`confidentiality of certain documents, based on RGB’s use of these documents to
`
`support their claim of priority in the IPR proceeding. A true and correct copy of
`
`this email is attached as Appendix M.
`
`28. Also in the January 20, 2014 letter, I requested de-designation of other
`
`documents relating to communications between Compumotor and RGB from the
`
`mid 90’s.
`
`29.
`
`In a January 20, 2014 email, Patrick Lafferty responded, stating that
`
`RGB would consider the requests. A true and correct copy of this email is
`
`attached as Appendix N.
`
`30. RGB has still not acted on ABB’s January 20, 2014 letter.
`
`
`
`1401097/1/CLEVELAND
`
`
`
`Page 7
`
`

`

`Case IPR2013-00063
`Patent 6,513,058 B2
`
`
`
`31. On March 24, 2014, I sent RGB’s litigation and IPR counsel an email,
`
`requesting that RGB serve any and all “relevant information that is inconsistent
`
`with” RGB’s position that McClung is not a co-inventor of claimed subject
`
`matter. A true and correct copy of this email is attached as Appendix O.
`
`32. Also in the March 24 email, I stated that ABB believed that RGB was
`
`in violation of Rule 42.51(b)(1)(iii) based on deposition testimony of Mr. Brown
`
`in the co-pending litigation with ABB, taken pursuant to the district court
`
`litigation and exhibits introduced during his deposition. RGB marked these as
`
`confidential, and did not produce them as part of routine discovery in this
`
`proceeding.
`
`33. On March 24, 2014, Richard Meyer sent an email response in which
`
`he denied that RGB was obligated to produce any of these documents in the IPR
`
`proceedings. A true and correct copy of this response is found in Appendix O.
`
`34. Also in Mr. Meyer’s March 24 email, RGB conditioned the de-
`
`designation of documents or consent to filing on specific identification of
`
`documents and testimony, putting the onus on ABB to identify inconsistencies.
`
`35. On March 24, 2014, I sent another email to Richard Meyer, stating
`
`that the issue of inventorship was brought into the IPR proceeding when RGB
`
`alleged “independent corroboration” based on Marc McClung’s deposition
`
`testimony. A true and correct copy of this email is found in Appendix O.
`
`
`
`1401097/1/CLEVELAND
`
`
`
`Page 8
`
`

`

`Case IPR2013-00063
`Patent 6,513,058 B2
`
`
`
`36. Also in this March 24 email, I requested that RGB de-designate
`
`testimony from the second day of Dave Brown’s deposition in the co-pending
`
`litigation (February 12, 2014), and various documents cited during the deposition.
`
`On that day, I examined Mr. Brown at length about the contributions of Mr.
`
`McClung to the XMC specification and documents pertaining to same. This
`
`testimony and the documents are inconsistent with RGB’s position that Mr.
`
`McClung “independently corroborated” Mr. Brown’s invention.
`
`37. On March 25, 2014, Richard Meyer sent an email in reply to my
`
`second March 24 email, and stated that RGB would not consider de-designating
`
`Mr. Brown’s transcript from the co-pending litigation unless ABB identified by
`
`specific pages of the testimony. Also in this email, Mr. Meyer stated that RGB
`
`would consider de-designating the exhibits that were identified. A true and
`
`correct copy of this email is found in Appendix O.
`
`38. After the close of business on March 25, Richard Meyer wrote me
`
`another email and agreed to de-designate some but not all of the Brown deposition
`
`exhibits that I specifically identified. Of those Brown deposition exhibits that his
`
`client refused to de-designate is Brown Exhibit 25. This document and Mr.
`
`Brown’s testimony about Brown Exhibit 25 are inconsistent with RGB’s position
`
`with Mr. McClung’s deposition testimony is “independent corroboration” of the
`
`alleged inventive activities of Mr. Brown. On behalf of RGB, Mr. Meyer, who
`
`
`
`1401097/1/CLEVELAND
`
`
`
`Page 9
`
`

`

`Case IPR2013-00063
`Patent 6,513,058 B2
`
`
`
`defended Mr. Brown’s deposition, has refused to declassify this testimony or
`
`Brown Exhibit 25, and he has refused to allow me to share same with Rick
`
`McLeod without signing the Litigation PO, which would then impede Mr.
`
`McLeod from representing ABB in this proceeding. A true and correct copy of
`
`this email is found in Appendix P.
`
`39.
`
`In the district court litigation, ABB has pending inequitable conduct
`
`counterclaims, based in part on Marc McClung’s participation in the
`
`Collaboration.
`
`40. To support these pending inequitable counterclaims, ABB relies in
`
`part on the RGB Documents, which were produced by RGB and have RGB Bates
`
`numbers.
`
`41. ABB’s answer and subsequent amended answers are under seal
`
`because RGB asserts that the RGB Documents are confidential under the
`
`Litigation PO.
`
`42. The Litigation PO states: "In the case of deposition upon oral
`
`examination or written questions, such testimony shall be deemed
`
`"CONFIDENTIAL" until the expiration of thirty (30) days after the deposition
`
`unless otherwise designated at the time of the deposition or during the thirty (30)
`
`day period." ABB could not present this testimony to the Board earlier than April
`
`13, 2014, absent waiver of confidentiality by RGB, which occurred when RGB
`
`
`
`1401097/1/CLEVELAND
`
`
`
`Page 10
`
`

`

`Case IPR2013-00063
`Patent 6,513,058 B2
`
`
`
`filed the McClung transcript and exhibits
`
` declare that all statements made herein of my own knowledge are true and
`
` I
`
`that all statements made on information and belief are believed to be true, and
`
`further that these statements were made with the knowledge that willful false
`
`statements and the like so made are punishable by fine or imprisonment, or both,
`
`under Section 1001 of Title 18 of the United States Code, and that such willful
`
`false statements may jeopardize the validity of the application or any patent issued
`
`thereon.
`
`
`
`
`
`1401097/1/CLEVELAND
`
`
`
`Page 11
`
`

`

`Date: Marchfffi, 2014
`
`Case IPR2013-00062
`
`Patent 6,516,236 B1
`
`g {2,6 AIL 0;}
`
`
`
`Steven M. Auvil
`
`Page 12
`
`

`

`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
`
`2
`
`

`

`Appendix B
`
`

`

` 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:
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`.
`
`;
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`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
`
`

`

`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`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
`
`
`
`---------------------------------------------------------------------
`39 offices in 19 countries
`
`This message is confidential and may be legally privileged or otherwise protected from
`disclosure. If you are not the intended recipient, please telephone or email the sender and delete
`this message and any attachment from your system; you must not copy or disclose the contents
`of this message or any attachment to any other person.
`
`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 www.squiresanders.com for
`more information.
`
`#US
`---------------------------------------------------------------------
`
`
`
`
`IRS Circular 230 disclosure:
`
`To ensure compliance with requirements imposed by the IRS, unless we expressly state otherwise, we inform you that any U.S.
`federal tax advice contained in this communication (including any attachments) is not intended or written to be used, and cannot be
`
`used, for the purpose of (i) avoiding penalties under the Internal Revenue Code or (ii) promoting, marketing or recommending to
`
`another party any transaction or matter addressed herein.
`
`
`
`The information contained in this electronic message is confidential information intended only for the use of the named recipient(s)
`
`and may contain information that, among other protections, is the subject of attorney-client privilege, attorney work product or
`exempt from disclosure under applicable law. If the reader of this electronic message is not the named recipient, or the employee or
`
`agent responsible to deliver it to the named recipient, you are hereby notified that any dissemination, distribution, copying or other
`
`use of this communication is strictly prohibited and no privilege is waived. If you have received th