From:
`
`Sent:
`To:
`Cc:
`
`Subject:
`
`Sam,
`
`Scott McKeown
`
`Friday, May 01, 2015 7:25 PM
`'Miller, Samuel'; Ramage, W. Edward; Christopher Ricciuti
`CP Docket McKeown; CP Docket Kiklis; Crosby, Clint; Gibbs, Sharon
`
`RE: Depositions
`
`I stated that there is an option to take these depositions now, but Edward’s email expresses a choice to delay them for
`some date in the future. Thus, regardless of the rationale for your choice, I understand that you are not presently
`interested in taking the depositions of Mr. Suetens and Jahn. Please let me know if this is incorrect.
`
`Further, I do not understand why CTP believes Mr. Suetens and Jahn’s declarations must be filed in PRPS before taking
`their depositions. You were served with this evidence weeks ago, and the Board’s rulings are quite clear that
`supplemental evidence is effective when served.
`If you are of the position that you can ignore supplemental evidence
`unless it is uploaded to PRPS, that is plainly at odds with well-established PTAB practice and precedent.
`
`If CTP is now willing to take depositions of Mr. Suetens and Jahn, please let me know as soon as possible so that we can
`arrange for mutually agreeable dates. Thank you for the response.
`
`Scott
`
`From: Miller, Samuel [mailto:SamuelMi||er@bakerdonelson.com]
`Sent: Friday, May 01, 2015 5:06 PM
`To: Scott McKeown; Ramage, W. Edward; Christopher Ricciuti
`Cc: CP Docket McKeown; CP Docket Kiklis; Crosby, Clint; Gibbs, Sharon
`Subject: RE: Depositions
`
`Scott: Your email misrepresents Edward’s email. We have not in any way indicated such a waiver.
`reason that you cannot file the supplemental evidence?
`
`Is there a legitimate
`
`Sam
`
`Samuel F. Miller
`Direct: 615.726.5594 (Nashville)
`
`From: Scott McKeown [mailto:SMcKeown@oblon.com]
`Sent: Friday, May 01, 2015 4:03 PM
`To: Ramage, W. Edward; Miller, Samuel; Christopher Ricciuti
`Cc: CP Docket McKeown; CP Docket Kiklis; Crosby, Clint; Gibbs, Sharon
`Subject: RE: Depositions
`
`Edward,
`
`Rule 42.53 in no way prevents these depositions from occurring now. In fact, parties are free to agree to
`
`discovery between themselves at any time. 42.51(b)(2)(i). While I don't believe this point is in any way
`controversial, if you require explicit confirmation from the Board, I remain available to discuss this with the
`Board at your convenience. In the case of such straightforward inquiries, the Board will typically decline the
`teleconference offer and simply confirm the understanding of the parties via email.
`
`1
`
`PETITIONERS EX. 1027, p. 1
`Kodak v. CTP
`
`|PR2014-00788
`
`PETITIONERS Ex. 1027, p. 1
`Kodak v. CTP
`IPR2014-00788
`
`

`

`Because we can easily secure the Board's guidance in a day or two, i understand that you are choosing to decline
`our proposed dates for Mr. Suetens and Jahn in favor of as yet undetermined, later dates.
`
`i will await your response on Mr. Stevenson.
`
`Scott
`
`From: Ramage, W. Edward [mailto:eramage@bakerdonelson.com]
`Sent: Friday, May 01, 2015 1:53 PM
`To: Scott McKeown; Miller, Samuel; Christopher Ricciuti
`Cc: CP Docket McKeown; CP Docket Kiklis; Crosby, Clint; Gibbs, Sharon
`Subject: RE: Depositions
`
`Scott:
`
`Thank you for clarifying that the declarations are intended to be supplemental evidence. As such, we maintain
`
`that the declarations are improper for all of the reasons in our letter of April 22, 2015.
`
`With regard to cross-examination by deposition, we appreciate your willingness to be flexible on
`timing. However, we do not appear to be permitted under 37 CFR 42.53 to take the depositions of these
`declarants as the proposed supplemental evidence has not been filed.
`If these declarations are filed, we can
`address the need for any depositions, and their timing within the rules and deadlines set by the Scheduling
`Order as amended by the parties, at that point.
`
`I am checking with Mr. Stevenson with regard to some deposition dates later this month, and will revert.
`
`Best regards,
`
`Edward Ramage
`
`W. Edward Ramage
`Chair, Intellectual Property Group
`Baker, Donelson, Bearman, Caldwell & Berkowitz, PC
`Direct: 615.726.5771
`Fax: 615.744.5771
`Email: eramage@bakerdonelson.com
`www. bakerdonelson.com
`
`From: Scott McKeown [mailto:SMcKeown@oblon.com]
`Sent: Wednesday, April 22, 2015 3:06 PM
`To: Miller, Samuel; Christopher Ricciuti
`Cc: CP Docket McKeown; CP Docket Kiklis; Crosby, Clint; Ramage, W. Edward; Gibbs, Sharon
`Subject: RE: Depositions
`
`Mr. Ramage/Miller,
`
`2
`
`PETITIONERS EX. 1027, p. 2
`Kodak v. CTP
`
`|PR2014-00788
`
`PETITIONERS Ex. 1027, p. 2
`Kodak v. CTP
`IPR2014-00788
`
`

`

`Thank you for your letter of April 20, 2015. As your letter expresses considerable confusion as to
`PTAB trial practice, as well as to the content of our April 16, 2015 communication, please allow
`me to clarify.
`
`Petitioners’ email communication of April 16th was captioned “Supplemental Evidence.”
`Likewise, the cover sheet for each proceeding references Rule 42.64(b)(2). This rule provides
`that supplemental evidence may be served within 10 days of an objection. As such our 4/16,
`communication is clearly not a petitioner response, supplemental information, or an opposition to
`your motion to exclude. It is supplemental evidence, which is plainly permissible under the cited
`rule —and entirely unremarkable as far as PTAB trial practice is concerned. Further, for a
`motion to exclude to be proper under Rule 42.64(c), it must “identify the objections in the record
`in order and must explain the objections.” As you explain at great length in your “Motion to
`Exclude,” you did not object to Mr. Suetens’ declaration and the Apogee exhibit before April
`2nd. Accordingly, for your “Motion to Exclude” to be proper under the PTAB’s rules, which
`Petitioners do not concede, your 4/2 filing would have to contemporaneously be considered an
`objection to evidence, thereby triggering Petitioners’ right to submit supplemental evidence
`under Rule 42.64(b)(2).
`
`You argue that petitioners’ supplemental evidence is a violation of Board rules, yet you have not
`cited any PTAB rule for this assertion. On the other hand, petitioners have cited to the Rule
`42.64(b)(2). It seems your argument is against this rule, not any improper conduct of petitioners.
`
`Further, your complaints pertaining to “due process” evince a fundamental misunderstanding of
`PTAB practice and procedure. Not only is patentee discovery not “closed” you have a second
`period of discovery that has yet to even begin. That is, patentees are accorded two separate
`discovery periods in IPR to account for information in petitioner replies. “Once the time for
`taking discovery in the trial has ended, the parties will be authorized to file motions to exclude
`evidence believed to be inadmissible.” Oflice Patent Trial Practice Guide, 77 Fed. Reg. 48756,
`48758 (Auhg. 14, 2012). Motions to exclude are authorized at the close of trial, Due Date 4, which
`is June 11 .
`
`On this last point, as stipulated changes to the schedule have left you with a limited second
`discovery period, Mr. Suetens and Mr. Jahn will be made available early, as a professional
`courtesy, as follows:
`
`Suetens: May 6th
`Jahn: May 12-15th
`
`Please advise as to your intention in this regard.
`
`Scott
`
`From: Miller, Samuel [mailto:SamuelMiller@bakerdonelson.com]
`Sent: Monday, April 20, 2015 5:20 PM
`To: Scott McKeown; Christopher Ricciuti
`Cc: CP Docket McKeown; CP Docket Kiklis; Crosby, Clint; Ramage, W. Edward; Gibbs, Sharon
`Subject: RE: Depositions
`
`Please see correspondence attached.
`
`Samuel F. Miller
`
`Shareholder and Co-Chair — Intellectual Property and Technology Litigation
`
`3
`
`PETITIONERS EX. 1027, p. 3
`Kodak v. CTP
`
`lPR2014-00788
`
`PETITIONERS Ex. 1027, p. 3
`Kodak v. CTP
`IPR2014-00788
`
`

`

`Baker, Donelson, Bearman, Caldwell & Berkowitz, PC
`Baker Donelson Center, Suite 800
`211 Commerce Street
`
`Nashville, TN 37201
`Direct: 615.726.5594 (Nashville)
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`Alt. Direct: 901.577.2175 (Memphis)
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`Email: smiller@bakerdonelson.com
`www.bakerdonelson.com| bakerdonelson.com|
`
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`
`4
`
`PETITIONERS EX. 1027, p. 4
`Kodak v. CTP
`
`|PR2014-00788
`
`PETITIONERS Ex. 1027, p. 4
`Kodak v. CTP
`IPR2014-00788
`
`