Bittman, Scott
`
`From:
`Sent:
`To:
`Cc:
`Subject:
`
`Lindsay, Jonathan
`Thursday, September 19, 2013 5:24 PM
`Sean Luner; Wieland III, Charles (charles.wieland@bipc.com)
`Rick Lyon; Scheer, Michael J.; Dunham, Thomas M.; AV1-PRPS
`RE: IPR2013-00071 - Network-1's Discovery Obligations
`
`Sean, Chad
`
`As we previously stated, we reject Network-1’s attempt to impose the burden upon Avaya to identify potentially
`inconsistent documents, especially when Avaya cannot access documents in Network-1’s (and its expert’s)
`possession, custody, or control. Consistent with Network-1’s duty of candor to the PTO, and its discovery
`obligations to the Board, it is Network-1’s responsibility to produce any documents that contain inconsistent
`information, whether or not Avaya can or does identify them.
`
`With respect to your characterization of our July conversation, you had represented to us that Network-1 had
`fulfilled its “routine discovery” obligations at that time. Since making that representation, however, Network-1 has
`now taken many more positions including in its Response, Motion to Amend, and Expert declaration. Accordingly,
`documents that may not have contained “inconsistent information” before, may do so now. This is why we begin
`our email below with the introduction of “In view of Network-1’s Response and Motion to Amend . . . .”
`
`That said, if your position is that that Network-1, its attorneys, Dr. Knox, Mr. Horowitz, and the inventors, have
`produced all documents in their possession, custody, or control that include any information “that is inconsistent
`with a position advanced by [Network-1]” in this Proceeding, even in view of Network-1’s Response and Motion to
`Amend, then you should confirm that position in writing.
`
`Concerning your suggestion to obtain a protective order in this IPR to protect any confidential documents,
`Network-1 has been free to approach the Board for a protective order at any point before the filing of Network-1’s
`Response and Motion to Amend, or even during the last six weeks following their filing. In any event, such
`documents would have been due “concurrent[ly] with the filing of the documents or things that contains the
`inconsistency,” which in this Proceeding includes at least the Preliminary Response, Response, and Motion to
`Amend. 37 CFR § 42.51(b)(1)(iii). Consistent with the position that we have taken throughout this proceeding,
`Avaya would not oppose Network-1 approaching the Board for a protective order, even at this late date, in order to
`comply with its discovery obligations. We are generally available tomorrow or next week (other than during Dr.
`Knox’s deposition) for such a call with the Board.
`
`With respect to your offer to produce non-confidential documents, we expect that Network-1 will promptly
`produce any non-confidential documents produced, generated, filed, submitted, or otherwise disseminated by any
`party (including Network-1, the defendants, and third parties) that contain any information “that is inconsistent
`with a position advanced by [Network-1]” in this Proceeding. Again, however, if Network-1’s position is that there
`are no such documents, even in view of Network-1’s Response and Motion to Amend, then you should confirm
`that position in writing.
`
`Regards,
`
`Jonathan
`
`
`From: Sean Luner [mailto:sean@dovellaw.com]
`Sent: Wednesday, September 18, 2013 8:50 AM
`To: Lindsay, Jonathan
`
`1
`
`AVAYA INC. AV-1048 IPR2013-00071
`Avaya Inc. v. Network-1 Security Solutions, Inc.
`
`

`

`Cc: Wieland III, Charles (charles.wieland@bipc.com); Rick Lyon
`Subject: FW: IPR2013-00071 - Network-1's Discovery Obligations
`
`Jonathan,
`
` I
`
` am following up on my voicemail from yesterday and your e-mail to Chad (below).
`
`After your June 26, 2013 e-mail (referenced below), on July 1, 2013, we discussed your concerns relating to Network-1’s
`production. Based on our discussion, Avaya was going to identify specific documents that you wanted Network-1 to
`produce in this IPR proceeding and we were going to develop an approach to get you access to such documents
`(including confidential documents). We have been waiting for you to identify these documents. As a result, we were
`surprised by your recent e-mail.
`
`We are willing to work with you to develop a strategy that will allow us to provide you with any non-privileged
`documents, including confidential documents, that you would like, whether or not they are required discovery. While
`the approach that you outlined below (i.e., simply moving to modify the Protective Orders issued in all of the prior
`litigations) will not work for various reasons, we can evaluate other alternatives including requesting the Board to issue a
`Protective Order in this IPR proceeding and jointly requesting third-parties to allow you to access such
`documents. Because IPR proceedings are a new procedure and there has not been any guidance on the issue of
`producing confidential documents from prior litigations, we may need to be creative in developing the right approach.
`
`Please coordinate with Rick Lyon from our office (copied). Together you should be able to develop an approach that will
`provide you with any documents that you would like without violating Protective Orders and the rights of third-
`parties. In the meantime, if you are interested in receiving all non-confidential documents produced by Network-1 in
`the prior litigations, let us know and we can provide them to you.
`
`As always, thank you for your cooperation in this matter.
`
`Sean
`
`
`
`From: Lindsay, Jonathan [mailto:JLindsay@crowell.com]
`Sent: Thursday, September 12, 2013 4:45 PM
`To: Wieland III, Charles; Mukai, Robert
`Cc: AV1-PRPS
`Subject: IPR2013-00071 - Network-1's Discovery Obligations
`
`Chad,
`
`In view of Network-1’s Response and Motion to Amend, we are writing to follow up on our June 26, 2013 email
`regarding Network-1’s discovery obligations in this Proceeding. As you know, Network-1 is required to produce all
`“relevant information that is inconsistent with a position advanced by the party during the proceeding concurrent with
`the filing of the documents or things that contains the inconsistency.” 37 CFR § 42.51(b)(1)(iii).
`
`
`I.
`
`Network-1 Undoubtedly Has Relevant Information that is Inconsistent with Positions it has Advanced, and it
`Has Refused to Produce Such Information
`
`The only documents that Network-1 has produced to date consist of (i) public pleadings from prior litigations and (ii) one
`email that was an exhibit in the Cisco litigation (which we specifically requested after identifying it as being relevant
`from the trial transcript). Yet, Network-1, its attorneys, Mr. Horowitz, and Dr. Knox, have all been involved in a series of
`litigations involving the ’930 patent, and it is inconceivable that there are no other documents that are “inconsistent
`with a position” advanced by Network-1 in this Proceeding. Indeed, based on the public record, it appears that Dr. Knox
`served as both a non-infringement and invalidity expert in the Cisco litigation. As you know, we do not have access to
`
`2
`
`

`

`any of Dr. Knox’s expert reports from the Cisco litigation, and you have not produced any. Nor have you produced any
`expert reports of the other defendants, which presumably would rebut and/or be inconsistent with Dr. Knox’s
`opinions. We note that the IPR Rules do not limit the production of inconsistent positions to those taken by or authored
`by Network-1.
`
`Similarly, Network-1 asserts that Secondary Considerations support the non-obviousness of the challenged claims. (See
`Response, at 53-58). Yet, Network-1 has only identified pieces of evidence that it alleges supports its position. Avaya
`believes that, especially since invalidity under 35 U.S.C. § 103 was an issue in the prior litigations, there should be
`documents and information that are inconsistent with Network-1’s position. For example, in addition to the expert
`reports noted above, the prior litigations likely have involved evidence cited in those reports, discovery, and briefing on
`the issue.
`
`
`II.
`
`It Would Not be Unduly Burdensome for Network-1 to Identify and Produce Documents that Avaya Seeks
`
`We also disagree with Network-1’s previously-stated position that it has no obligation to search documents from the
`prior cases because of the large volume of documents that exist and that it is incumbent upon Avaya to specifically
`identify potentially inconsistent documents. That burden shifting is inconsistent with the Rules and, frankly, an
`impossibility given that Avaya has no way of knowing what documents that Network-1 has in its possession, custody, or
`control. Moreover, these documents were all generated during the course of litigation and the Dovel & Luner firm – the
`same firm that is counsel of record in this Proceeding – was counsel of record in the prior litigations. Thus, we find that
`Network-1’s position lacks credibility.
`
`
`III.
`
`Network-1 Cannot Refuse to Produce Based on Confidentiality Grounds
`
`Furthermore, Mr. Luner has previously taken the position that a protective order from the prior case would likely
`prohibit the production of relevant documents in this Proceeding. Again, however, consistent with Network-1’s “duty of
`disclosure” to the PTO, and the rules of this Proceedings, it is Network-1’s responsibility to obtain relief from any such
`prior protective order. Paragraph 21 of the Protective Order from the Cisco litigation specifically authorizes Network-1
`to seek such relief:
`
`
`21. This Protective Order shall not prevent the parties from applying to the Court for
`relief therefrom or modification thereto, or from applying to the Court for further or
`additional relief by way of protective orders or otherwise, or from agreeing between
`themselves to modifications of this Protective Order.
`
`
`(Doc. 107, p. 18). Simply put, it is improper for Network-1 to refuse to produce based on confidentiality
`grounds. Network-1 withholding material information during this Proceeding could constitute inequitable conduct that
`renders the ’930 patent unenforceable in the underlying district court litigation. If Network-1 has confidentiality
`concerns in this Proceeding, the IPR rules allow Network-1 to seek an appropriate Protective Order to protect any such
`information.
`
`Please provide a written response to this email by no later than September 17, 2013 that: (1) indicates when Network-1
`will produce additional documents, along with an explanation as to why the documents have not previously been
`produced, (2) confirms that Network-1, its attorneys, Dr. Knox, Mr. Horowitz, and the inventors, have produced all
`documents in their possession, custody, or control that include any information “that is inconsistent with a position
`advanced by [Network-1]” in this Proceeding, (3) confirms that Network-1 is searching documents produced, generated,
`and advocated by other parties (including the defendants in the prior litigations) and (4) explains the steps taken to
`locate inconsistent documents.
`
`Regards,
`
`Jonathan
`
`
`3
`
`

`

`
`
`Jonathan Lindsay
`Crowell & Moring LLP
`3 Park Plaza, 20th Floor
`Irvine, CA 92614
`p 949.263.8400 | f 949.263.8414 | JLindsay@Crowell.com
`
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`4
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