Bittman, Scott
`
`From:
`Sent:
`To:
`Cc:
`Subject:
`
`Lindsay, Jonathan
`Wednesday, June 26, 2013 3:16 PM
`Wieland III, Charles
`Mukai, Robert; Sanok, Jeffrey D.
`IPR2013-00071 - Discovery
`
`Chad,
`
`We are writing to follow up from the June 20, 2013 Order (Paper 25) concerning discovery. In particular, we expect
`Network-1 Security Solutions, LLC (“Network-1”) will immediately produce at least the following documents:
`
`
`• All deposition transcripts from the prior district court litigations involving the ‘930 Patent (“the prior ’930 Patent
`Litigations”) of the inventors named in the ‘930 Patent and/or in Provisional App. No. 60/123,688 and of the
`prosecuting attorney.
`
`• All expert reports and declarations prepared and served on behalf of Network-1 in the prior ‘930 Patent
`Litigations in which a construction, interpretation, meaning, or definition of the phrase “low level current,” or
`any other construed term of claims 6 and 9, that was articulated that was different from the proposed claim
`construction of that term set forth by Network-1 in its Preliminary Response to the Petition for Inter Partes
`Review or where a position was taken on any of the prior art references that are subject to review in this IPR,
`and all deposition transcripts relating to such reports and declarations, and all drafts of reports and declarations
`and all communications with such experts concerning the same.
`
`• All deposition transcripts taken in the prior ‘930 Patent Litigations of any current or former employees or agents
`of Network-1, Merlot Communications, or BAXL Technologies in which a construction, interpretation, meaning,
`or definition of the phrase “low level current” was articulated that was different from the proposed claim
`construction of that term set forth by Network-1 in its Preliminary Response to the Petition for Inter Partes
`Review.
`
`• All non-public briefs concerning any motions for summary judgment of invalidity or non-infringement filed in the
`prior ‘930 Patent Litigations in which in which a construction, interpretation, meaning, or definition of the
`phrase “low level current” was articulated that was different from the proposed claim construction of that term
`set forth by Network-1 in its Preliminary Response to the Petition for Inter Partes Review.
`
`• All communications between Corey Horowitz and Merlot Communications in connection with Network-1’s
`acquisition of the ‘930 Patent, concerning any potential issues with the validity of the ‘930 Patent, any potential
`meanings of any claim terms, or that refer to claim language of any claim of the ‘930 Patent (See Cisco matter at
`Docket No. 511, p. 23, lines 12-18).
`
`• All documents and electronically stored information, including any correspondence to or from Network-1, Corey
`Horowitz, or any of the inventors named in the ‘930 Patent and/or in Provisional App. No. 60/123,688,
`concerning the scope of the ‘930 Patent, where a scope was articulated that was inconsistent with the scope set
`forth by Network-1 in its Preliminary Response to the Petition for Inter Partes Review at pages 4-6.
`
`These document fall under the definition of routine discovery under 37 C.F.R. § 42.51(b)(1). For example, Network-1 has
`changed its proposed claim construction for the term “low level current,” and has thus taken an inconsistent position
`concerning the proper construction of that term, between the prior D-Link and Cisco litigations, as well as between the
`D-Link litigation and this IPR proceeding. Specifically, Network-1 argued in D-Link that the proper construction for “low
`level current” is “a detection current too small to sustain operation of the access device.” In contrast, Network-1 then
`took the position in each of the Cisco litigation and in this IPR proceeding that the proper construction for “low level
`
`1
`
`AVAYA INC. AV-1049 IPR2013-00071
`Avaya Inc. v. Network-1 Security Solutions, Inc.
`
`

`

`current” was instead “a current at a level that is sufficiently low that it will not (a) operate the access device, or (b)
`damage an access device that is not designed to accept power through the data signaling pair.” These constructions are,
`by definition, inconsistent, and the respective arguments advanced in their favor would also be inconsistent. Similarly,
`Network-1 has taken positions relating to that term that is based on a construction adopted by the E.D.Tex. court which
`was different from the construction proposed by Network-1 in this proceeding. Thus, each of the documents identified
`above contain information that is inconsistent with a position that Network-1 has advanced during this
`proceeding. Network-1 has therefore failed to comply with 37 C.F.R. § 42.51(b)(1)(iii).
`
`Additionally, with respect the above-referenced communications by Corey Horowitz, we specifically understand that
`there were certain email communications by Mr. Horowitz to Merlot Communication in connection with his purchase of
`the ‘930 Patent that were alleged by Cisco to show that Mr. Horowitz believed there were various issues with the
`validity of the ‘930 Patent. At least and until those communications are produced, as well as any other evidence
`showing Mr. Horowitz believed there were issues with the validity of the ‘930 Patent, Network-1 will have failed to
`comply with 37 C.F.R. § 42.51(b)(1)(iii).
`
`To the extent that Network-1 disagrees, however, that such documents constitute Routine Discovery under 37 C.F.R. §
`42.51(b)(1)(iii), then we request that Network-1 agrees to produce each such documents as Additional Discovery
`pursuant to 37 C.F.R. § 42.51(b)(2)(i).
`
`Please let us know whether you are available for a meet and confer on June 28th to discuss whether you will agree to
`produce each of these documents and, if not, the basis for Network-1’s position so that we can determine if relief should
`be sought from the Board.
`
`Separately, please confirm that Network-1 has complied with its discovery obligations by serving all other “relevant
`information that is inconsistent with a position advanced by [Network-1] during the proceeding concurrent with the
`filing of the documents or things that contains the inconsistency.” 37 C.F.R. § 42.51(b)(1)(iii).
`
`Regards,
`
`Jonathan
`
`
`
`Jonathan Lindsay
`Crowell & Moring LLP
`3 Park Plaza, 20th Floor
`Irvine, CA 92614
`p 949.263.8400 | f 949.263.8414 | JLindsay@Crowell.com
`
`The information contained in this e-mail and any attachment may be privileged, confidential or otherwise protected from disclosure and is
`intended only for the use of the intended recipient(s). It is not intended for transmission to, or receipt by, any unauthorized person. The
`use, distribution, transmittal or re-transmittal by an unintended recipient of this communication is strictly prohibited without our express
`written approval. If you are not the intended recipient of this e-mail, please delete it from your system without copying it and notify the
`above sender. Receipt by anyone other than the intended recipient is not a waiver of any attorney-client, work-product, or other privilege.
`
`
`2
`
`