`To:
`Cc:
`Subject:
`Date:
`
`Cunningham, Laura
`Hollis, Amanda
`Graves, Jon; Schmidt, Leslie M.; De Vries, Mike W.; Altieri, Stephen; J. Mitchell Jones
`RE: IPR2014-00003
`Tuesday, June 03, 2014 5:45:07 PM
`
`Amanda,
`
`Your claim that “Neptune has been resisting our efforts to resolve this matter by agreement and
`needlessly prolonging the dispute” couldn’t be further from the truth. In the ITC and in this
`proceeding, Aker has put up a stream of denials and excuses as to why it does not have or will not
`produce these documents. As a result of outright misrepresentations by Aker, we were denied this
`discovery in the ITC. Here, Aker attempted to block us from discovering who had these documents
`in the Haugsgjerd deposition – the record of the improper instructions not to answer speaks for
`itself. Aker then strenuously objected to producing the documents in this proceeding until after the
`Board call, late in the day our motion was due and after the time we told Judge Greene we would
`file. This belated proposal sought Neptune’s agreement to vague conditions and arbitrary discovery
`limits in exchange for documents to which Neptune is clearly entitled in the first place.
`
`Notwithstanding this context, we considered your proposal in good faith and provided a prompt and
`fair response. We have had to file two motions to compel documents that are not privileged, highly
`relevant, and should have been produced in the first instance. Since Aker is refusing to pay
`Neptune’s attorneys’ fees associated with the May 30 motion, we reserve all rights to seek relief as
`appropriate, for example, to address Aker’s unsubstantiated objections to production (as
`represented to the Board during the May 28 call) that necessitated the filing of our May 30 motion.
`
`Finally, I note that we appear to have just received a link to download a document production from
`Aker – please confirm that this production includes all documents requested in Neptune’s May 30
`motion.
`
`Regards,
`Laura
`
`
`
`Laura J. Cunningham
`Cooley LLP
`1299 Pennsylvania Avenue, NW • Suite 700
`Washington, DC 20004-2400
`Direct: +1 202 728 7072 • Fax: +1 202 842 7899
`Email: lcunningham@cooley.com • www.cooley.com
`
`Admitted to practice in Virginia
`
`From: Hollis, Amanda [mailto:ahollis@kirkland.com]
`Sent: Tuesday, June 03, 2014 2:44 PM
`To: Cunningham, Laura
`Cc: Graves, Jon; Schmidt, Leslie M.; De Vries, Mike W.; Altieri, Stephen; J. Mitchell Jones
`Subject: RE: IPR2014-00003
`
`Laura,
`
`1
`
`
`
`
`The tenor of Neptune's email is unwarranted and the substance of its accusations is incorrect.
`AKBM has endeavored to work cooperatively to attempt to address and resolve this issue, and
`AKBM's attempt to work this issue out by mutual agreement should not be met with escalation.
`
`Neptune's suggestion that a cooperative resolution should depend on AKBM agreeing to pay
`Neptune’s attorneys’ fees is unwarranted and unreasonable, as are Neptune's accusations. The
`parties have had a legitimate dispute about discoverability of these materials, which AKBM has been
`trying to confer with Neptune about, but Neptune has been resisting our efforts to resolve this
`matter by agreement and needlessly prolonging the dispute. There also were no improper
`“block[ing]” privilege instructions at Mr. Haugsgjerd’s deposition. Neptune repeatedly asked Mr.
`Haugsgjerd whether the documents were given to AKBM, without any objection at all, and as for the
`few questions about these documents that raised privilege concerns, I volunteered to confer with
`you about those concerns and have the parties call the Board at the time to resolve them. Our
`request for guidance from the Board about available remedies for the several hours of cross-
`examination Neptune conducted of Mr. Haugsgjerd outside the scope of his declarations further was
`in no way “retaliatory” or connected to the dispute over Mr. Haugsgjerd’s documents, and had clear
`support in the rules and case law. See, e.g., Corning Inc. v. DSM IP Assets, IPR2013-00043, 2013 WL
`5970163 (Patent Tr. & App. Bd.), 1 (“We . . . repeat the admonition: excessive questioning beyond
`the scope of a witness's direct testimony may be considered an abuse of discovery. See 37 C.F.R. §
`42.12(a)(5).”).
`
`We regret that Neptune is attempting to condition a cooperative resolution on acceptance of
`unreasonable conditions. Nevertheless, in light of Neptune's agreement that production of the
`requested documents will not amount to a waiver, as well as the comments made by the Board at
`the hearing on Neptune's request for authorization to file its motion, we plan to go ahead and
`arrange for their production to Neptune.
`
`Regards,
`Amanda
`
`
`Amanda Hollis | Kirkland & Ellis LLP
`300 North LaSalle | Chicago, IL 60654
`312-862-2011 | amanda.hollis@kirkland.com
`
`
`From: Cunningham, Laura [mailto:lcunningham@cooley.com]
`Sent: Monday, June 02, 2014 1:19 PM
`To: Hollis, Amanda
`Cc: Graves, Jon; Schmidt, Leslie M.; De Vries, Mike W.; Altieri, Stephen
`Subject: RE: IPR2014-00003
`
`Amanda,
`
`It is unfortunate that this attempt at cooperation did not come sooner. Not only has Aker
`consistently refused to produce these documents both before and after our call with the Board, it
`
`2
`
`
`
`attempted to smear us by raising a baseless, retaliatory sanctions motion. Moreover, you tried to
`block us from discovering that Aker has these documents by issuing improper privilege instructions
`during the Haugsgjerd deposition, which you now appear to concede were without basis, after Aker
`already misrepresented to us and the ITC that it had no such documents.
`
`In short, Neptune has had to incur substantial expense and delay to pursue these critical documents,
`and has been met with nothing but resistance and outright false representations by Aker. We are
`confident our motion will prevail. However, in the interest of obviating the need for the Board to
`resolve a disputed motion, we would agree to the following:
`
`
`· Aker agrees to produce all documents sought by the motion on or before Thursday, June 5
`· Aker agrees to pay Neptune’s attorney fees associated with preparing and filing the motion
`for additional discovery
`· Neptune agrees that Aker’s voluntary production of these documents will not constitute a
`waiver of any attorney-client privilege that may attach to other documents or information
`
`We find the second “condition” you reference too vague to understand and are not willing to agree
`to it, as we have no way to know how Aker may attempt to interpret it. For example, we don’t think
`that requesting an additional deposition of Mr. Haugsgjerd would be “us[ing] Aker's willingness to
`compromise on a disputed issue against Aker,” and in any event, we see no reason why we should
`agree to forego potential future discovery before we even see the documents, particularly in light of
`the egregiousness of Aker’s past conduct outlined above.
`
`Regards,
`Laura
`
`Laura J. Cunningham
`Cooley LLP
`1299 Pennsylvania Avenue, NW • Suite 700
`Washington, DC 20004-2400
`Direct: +1 202 728 7072 • Fax: +1 202 842 7899
`Email: lcunningham@cooley.com • www.cooley.com
`
`Admitted to practice in Virginia
`
`From: Hollis, Amanda [mailto:ahollis@kirkland.com]
`Sent: Friday, May 30, 2014 10:54 PM
`To: Cunningham, Laura
`Cc: Graves, Jon; Schmidt, Leslie M.; De Vries, Mike W.
`Subject: IPR2014-00003
`
`
`
`Laura,
`
`As mentioned in our call today, this is our proposed compromise: We would agree to produce
`copies of the laboratory notebook excerpts and reports you seek (i.e. those created by Mr.
`Haugsgjerd that document the Beaudoin & Maruyama recreations he conducted on which AKBM
`relies) if Neptune will agree such production does not constitute a waiver of privilege for any
`purpose or with respect to any other document or information, and further on the condition that
`
`3
`
`
`
`Neptune will not use Aker's willingness to compromise on a disputed issue against Aker (for
`example, Neptune will not argue this should trigger a new deposition of Mr. Haugsgjerd).
`
`Please let us know your response by Monday.
`
`Regards,
`Amanda
`
`Amanda Hollis | Kirkland & Ellis LLP
`300 North LaSalle | Chicago, IL 60654
`312-862-2011 | amanda.hollis@kirkland.com
`
`
`
`***********************************************************
`IRS Circular 230 Disclosure:
`To ensure compliance with requirements imposed by the U.S. Internal Revenue Service, we inform you
`that any tax advice contained in this communication (including any attachments) was not intended or
`written to be used, and cannot be used, by any taxpayer for the purpose of (1) avoiding tax-related
`penalties under the U.S. Internal Revenue Code or (2) promoting, marketing or recommending to
`another party any tax-related matters addressed herein.
`
`The information contained in this communication is confidential, may be attorney-client privileged, may
`constitute inside information, and is intended only for the use of the addressee. It is the property of
`Kirkland & Ellis LLP or Kirkland & Ellis International LLP. Unauthorized use, disclosure or copying of
`this communication or any part thereof is strictly prohibited and may be unlawful. If you have received
`this communication in error, please notify us immediately by return e-mail or by e-mail to
`postmaster@kirkland.com, and destroy this communication and all copies thereof, including all
`attachments.
`***********************************************************
`
`
`This email message is for the sole use of the intended recipient(s) and may contain confidential and privileged information. Any
`unauthorized review, use, disclosure or distribution is prohibited. If you are not the intended recipient, please contact the sender by
`reply email and destroy all copies of the original message. If you are the intended recipient, please be advised that the content of this
`message is subject to access, review and disclosure by the sender's Email System Administrator.
`
`IRS Circular 230 disclosure: To ensure compliance with requirements imposed by the IRS, we inform you that any U.S. federal tax
`advice contained in this communication (including any attachment) is not intended or written by us to be used, and cannot be used, (i)
`by any taxpayer for the purpose of avoiding tax penalties under the Internal Revenue Code or (ii) for promoting, marketing or
`recommending to another party any transaction or matter addressed herein.
`
`***********************************************************
`IRS Circular 230 Disclosure:
`To ensure compliance with requirements imposed by the U.S. Internal Revenue Service, we inform you
`that any tax advice contained in this communication (including any attachments) was not intended or
`written to be used, and cannot be used, by any taxpayer for the purpose of (1) avoiding tax-related
`penalties under the U.S. Internal Revenue Code or (2) promoting, marketing or recommending to
`another party any tax-related matters addressed herein.
`
`The information contained in this communication is confidential, may be attorney-client privileged, may
`constitute inside information, and is intended only for the use of the addressee. It is the property of
`Kirkland & Ellis LLP or Kirkland & Ellis International LLP. Unauthorized use, disclosure or copying of
`this communication or any part thereof is strictly prohibited and may be unlawful. If you have received
`this communication in error, please notify us immediately by return e-mail or by e-mail to
`
`4
`
`
`
`postmaster@kirkland.com, and destroy this communication and all copies thereof, including all
`attachments.
`***********************************************************
`
`This email message is for the sole use of the intended recipient(s) and may contain confidential and privileged information. Any
`unauthorized review, use, disclosure or distribution is prohibited. If you are not the intended recipient, please contact the sender by
`reply email and destroy all copies of the original message. If you are the intended recipient, please be advised that the content of this
`message is subject to access, review and disclosure by the sender's Email System Administrator.
`
`IRS Circular 230 disclosure: To ensure compliance with requirements imposed by the IRS, we inform you that any U.S. federal tax
`advice contained in this communication (including any attachment) is not intended or written by us to be used, and cannot be used, (i)
`by any taxpayer for the purpose of avoiding tax penalties under the Internal Revenue Code or (ii) for promoting, marketing or
`recommending to another party any transaction or matter addressed herein.
`
`5